The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
Protection of Packaging Through Trademarks: A Successful Case Study
Packaging is of paramount importance in the commercialization of products.
A visually appealing packaging is more likely to sell better because it catches the customer’s eye and is easy to remember.
The market is crowded with products that have gained worldwide renown thanks to their legendary packaging, but also with products that evoke that packaging in the attempt to ride the wave of its success.
Protecting packaging through IP rights is therefore a key factor in marketing strategies.
Here we wish to focus our attention on packaging protection through trademarks, and more particularly to a recent case where a client of ours has successfully achieved all-round protection for their packaging within the EU territory.
The family-owned Italian company Rondolino Società Cooperativa Agricola − hereinafter for brevity 'Rondolino' − has been active in the rice-growing sector since 1935 and for over three decades has been particularly dedicated to the production of a special rice variety named 'Acquerello' that is grown, processed and packaged on the family farm and is sold in over 70 countries all over the world.
Several famous chefs have expressed their enthusiasm for the 'Acquerello' rice, including Alain Ducasse, who has called it “the Rolls-Royce of rice varieties”.
The first protection of the word mark 'Acquerello' in Italy dates back to as early as 1991 and protection was then progressively extended to other countries of interest.
With the increasing widespread of Rondolino’s flagship project 'Acquerello', Rondolino became afraid that third parties may profit from their success by using packages whose combination of colours and/or graphic elements might evoke the iconic tin can in which the 'Acquerello' rice is sold, which until a short time ago was protected only in Italy and only as shape trademark.
Rondolino therefore came to the decision to protect the unique appearance of 'Acquerello' tin can in order to prevent competitors from exploiting its powerful marketing and communication work done over the years to promote not only the quality, but also the image, of its main product.
The strategy proposed by Interpatent in this respect was a multilateral approach to the issue that involved simultaneous filing of several trademark applications with the EUIPO (European Intellectual Property Office).
The filing of three applications for different types of trademarks has enabled our client Rondolino to enjoy a level of protection that could not have been attained by filing one of such applications.
A first aspect consisted in protecting the tin can as a whole, by filing a 3D trademark application covering the overall visual impression given by the packaging − i.e. the combination of graphic elements, shape, colours and wordings − and not the shape of the tin can alone. Of course, descriptive elements such has 'IL RISO' ('THE RICE') appearing on the package were deleted from the views to be filed at the EUIPO.
EUTM Trademark Application No. 018945197 filed on 2 November 2023 and granted on 22 May 2024
To enhance the level of protection, the second aspect was filing a colour trademark.
To do so, we had to identify the colours that are most representative of Rondolino’s packaging and communication, determine the percentages in which said colours are present in the logo and packaging, provide the Pantone code of each of said colours and indicating the sequence of said colours, by specifying also the direction in which said colours are arranged (e.g. from top to bottom, from right to left, and so on).
In this connection, it should be noted that EUIPO rejects colour combinations that are not original or refer directly some features of the product to be distinguished or consist of colours customarily used in practice with reference to certain products, such as, for example, red for fire extinguishers, green for eco-friendly products, yellow for lemon-based products.
EUTM Trademark Application No. 018945190 filed on 2 November 2023 and granted on 17 February 2024
Last but not least, as a third aspect, a position trademark application was filed.
According to EUIPO, position trademarks are trademarks “consisting of the specific way in which the mark is placed on or affixed to the goods”, where the term 'mark' includes words, patterns, graphic motifs, 3-dimensional images and the like.
In this case, the application aimed to protect the specific position of the image of Rondolino’s family farm, which always appears in the middle horizontal strip of all Rondolino’s 'Acquerello' rice cans.
EUTM Trademark Application No. 018945189 filed on 2 November 2023 and granted on 29 February 2024
The above case study is of course not exhaustive of all the aspects and possibilities involved in packaging protection by means of IP rights, but it certainly stresses the importance of carefully evaluating the strategy to protect not only clients’ products themselves, but also the packaging in which they are marketed.