As we prepare for Post-Corona New Normal in global and local economics, Zambian business owners and brands, can no longer ignore the intellectual property issues arising from product package designing that affect the sales or their products – Trade Dress.
In the Industrial Property Journal of April 2020, published by PACRA, Tradekings Zambia Limited has just had their applications accepted for registration of several trademarks for household detergents which include Diamond, Xtra, Boom, Aloha and Hippo washing powders. These applications were for the packaging design and the brand designs themselves. The Tradekings Group is a regional powerhouse in the FMCG line of business, and ensuring the protection of the trademarks, product designs and concepts is as important as actually making of the products themselves.
Profitability for products on the shelf in the supermarket does not only lie in them being produced, but them being distinct from the next brand such that the consumer is not confused.
There is a case study that was done by the Intellectual Property Magazine in Zimbabwe, that of two potato chip products with similar packaging designs. In 2018, there was a situation where market researchers noticed that Hanawa Super Foods’ cheese flavour packaging and Willards cheese flavour packaging looked alike; therein lay what is now known as Trade Dressing in the world of Intellectual Property under trademark laws.
As is in several countries in Africa, Willards is an established brand in the Zimbabwean market which has garnered a lot of appreciation in the snacks trade. Chompkins in particular have been a favourite amongst many however there has been a new product in the industry which looks very similar to the product and very likely to be mistaken for the Willards product.
The new product for an average consumer looks exactly like Chompkins, but the rude awakening comes after taking a closer look at the package of the similar product, Hanawa. This in the intellectual property world is what needs trade dress.
Trade dress is a type of trademark which is used in intellectual property to protect and to denote the visual appearance of a product and the way it is packaged and its individualities. Trade dress is often times than not compared to design patents. Trade dress is the overall commercial image (look and feel) of a product or service, which indicates or identifies the source of the product or service and distinguishes it from those of others. It may include the design or configuration of a product; the packaging of goods; and/or the décor or environment in which services are provided. Trade dress can consist of such elements as size, shape, colour, texture, etc., to the extent such elements are not functional.
Trade dress is a very uncommon concept, for there is much knowledge on protecting brands which is mostly done by trademark registration. Registering trademarks is important and highly useful in ensuring that the logo of a company is not violated by unauthorized users.
However, the common misconception is that, when the trademark has been registered the trade dress has also been protected which is highly unlikely. Trade dressing refers to the protection of the visual impression of an already trademarked brand, features of a product such as designs on the product package are well known to its consumers and this then gives rise to the need for trade dress.
It is important to note that there are some features of a product that cannot be subject to trade dress and some of these include colours and functional designs. Trade dress is important for branding and packaging of products which means that the visual impression that an average person gets from just looking at the product should instantly let them recognize the product and its trademark. As in the case of the John Deere tractors if an average person is to see a green and yellow tractor, they know it is a John Deere product.
Therefore, despite the limitation in trade dress for colours in this case these colours in respect of tractor trade may not be used by any other tractor trader for there are consumers that do not scrutinize a product because from just a mere perception of green and yellow being John Deere every yellow and green tractor becomes a John Deere which means these colours are distinct to the trade.
Colours however may not be restricted to one particular brand if there is no fear of the consumers being confused of the product. One can successfully seek trade dress if the products are in close proximity such that the confusion becomes apparent.
Trade dress may not be applicable in circumstances where, the feature to be trademarked is a common feature for products in the same trade. Therefore, for example, a product distributor may not trade dress the shape of a dish, because the deep curve, is a common feature in dish makers.
This also applies to the functionality of a product, if a certain feature is inherently a need in the products of the same trade it may not be subject to trade dress. Apple and Samsung gadgets are an example of the impossibility of trade dressing functionality. If some applications in the gadgets are to be trademarked it then means Apple becomes the only mobile trader.
The need for trade dress, therefore requires that the trader knows the trade dresses in that same line of trade and remains consistent such that an average consumer does not take the wrong product caused by visual impression and is confused as to whether it is the same product. Rebranding should not be too often and should be well advertised and be for a good cause.
However, most companies fail to register trademarks which are the most important in establishing a brand and this generally means trade dress is a foreign concept to them. Trade dress is yet to be fully appreciated in the intellectual property world.
As aforementioned on Willards and Hanawa being very similar, the questions that come to mind are has Hanawa been registered its marks and product designs? If so has Willards realized how confusing this can be to their consumers? And most importantly, are businesses in Zambia aware of this subtle but very important aspect of Trade Dress?
Source: IP Mag, UNTA
