Distinctive packaging, together with the product name, exerts brand power. However, there are many cases where protection of packaging is not adequately considered, and rights cannot be exercised when counterfeit goods are discovered.
This article introduces the usefulness of patenting package designs.
table of contents
Example of product packaging infringement case (Unfair Competition Law)
Mascara cosmetic container incident
(Osaka District Court, Judgment dated October 20.10.14, 19, Case No. 1688 of Heisei XNUMX (Wa), seeking injunction against unfair competition, etc.)
The plaintiffs' mascara containers and packaging had become well-known and famous as the plaintiffs' product markings, and the defendants' actions constituted unfair competition under Article 2, Paragraph 1, Items 1 or 2 of the Unfair Competition Prevention Act, leading to a request for an injunction against the defendants' products and compensation for damages.
The court recognized the uniqueness and well-known nature of the plaintiffs’ containers (and the packaging as a whole), as well as their similarity (likelihood of confusion) to the defendants’ packaging and containers, and granted the plaintiffs’ claim for damages.
In lawsuits filed under the Unfair Competition Act, packaging and other wrappingIs the plaintiff's product or service mark well-known?There are many cases where the issue of whether or not a mark is a trademark is disputed. In order to be considered a product indication, it must be unique, and in order to be recognized as well-known, it is necessary to show evidence such as advertising expenses, number of stores selling the mark, and sales. In addition, the plaintiff must also prove the infringer's intent or negligence, the likelihood of confusion, and the infringement (or the likelihood of infringement) of business interests. In order to seek an injunction or damages based on the Unfair Competition Law,The hurdles for plaintiffs are high.
→Trademark or design rights are valid
How to protect your packaging design
商標
・Trademark rights can be renewed for semi-permanent protection (duration of 10 years, renewable).
When exercising rights, there is no need to prove intent or negligence, public knowledge, or applicability of the product or other markings.
・Since distinctiveness is required, the three-dimensional shape of a container or other object alone may not be enough to register as a trademark.
(Coca-Cola bottles, Yakult containers) → Consider protection in conjunction with design rights.
- There is a possibility that rights may not be enforced for packages where the trademark has been altered.
*In the example on the left, the defendant's product does not use the trademark "Paint-on False Eyelashes" (Registered No. 4737240), so trademark infringement could not be claimed.
design
・Package design alone (without trademark) can be registered (duration: 25 years)
→The rights apply even to items where the trademark is not displayed or has been altered.
When exercising rights, there is no need to prove intent or negligence, public knowledge, or applicability of the product or other markings.
- Because novelty is required, registration is not possible after a product has gone on sale and become popular.
Examples of package design registrations
Design registration 1663517
Design registration 1535059
Copyright
- In order to be protected by copyright, a package must be recognized as a copyrighted work.
*If the packaging mainly features the image of the character, it may be recognized as copyrightable material.
- When exercising rights, it is necessary to prove that the work is copyrighted and that the infringing act is illegal, which places a heavy burden on the rights holder.
*The requirements for proving copyrightability, especially originality, vary depending on the nature of the work in question.
Unfair Competition Law
- In infringement cases, the burden is heavy on the plaintiff to prove that the infringer's actions constitute unfair competition.
- In cases other than dead copies, rights may not be exercised due to obstacles such as the relevance of the product or other indications on the packaging, or the risk of confusion or fame.
(Dead copy: Protection for up to three years from the start of sales in Japan)
About customs registration (import suspension)
Based on intellectual property rights such as design rights and trademark rights, customs can suspend the import of counterfeit goods. Trademark infringement accounts for the majority of cases of seizure, but injunctions based on design rights are effective in cases where products are brought into the country and then sold with a trademark attached, or where the mark is concealed. *A petition to suspend imports must be filed with customs.
Design rights for which import suspension has been requested by the customs office
Packaging bag (with konnyaku jelly)
ORIHIRO PLANDU Co., Ltd.
Design Registration No. 1455116
Product example
From Orihiro Health Food Shop
https://health.orihiro.com/jelly/