From food and drink to cosmetics, and from the packaging on the shelf to the packaging delivered to the door, a switch to eco-friendly forms of packaging is building momentum in many industries. However, as many companies convert to more eco-friendly packaging materials for their products, it is important to consider how this may affect the protection provided by any existing IP rights and understand what new protection might be available for the updated packaging.
The first thing to consider should be whether the change could mean that any of your existing IP protection no longer covers your products. If your product has previously enjoyed IP protection that has prevented competitors marketing similar products, then it will be important to recognise whether the change could now open the door to these competitors, and whether you might want to shore up your position with new IP rights as a result.
Whether or not existing protection is affected by the change will depend on the nature of your existing patent, trade mark and design rights and the precise changes being made to your product. Existing design rights are the most likely to be affected here, since these protect the way your products look, and a change of packaging can often lead to a product that has a different customer-facing appearance.
Next, you should consider whether any new protection might be available for your product as a result of the switch. Of course, if there is something technically innovative about the way your product is packaged, for example if you have invented a new packaging material or a new process for packaging the product, then you may be able to apply for a patent. However, in most cases, any new IP protection will specifically relate to how the look of your product is affected by the use of a new packaging material, or how the new eco-friendly packaging is branded.
For the unfamiliar, the shape and appearance of packaging can be protected with registered designs. This can include protection for packaging incorporating a material which looks different from your previous material. Furthermore, if the use of the new material is combined with a redesign of the packaging shape, whether part of a deliberate refresh of the look of the product or mandated by the different characteristics of the new packaging material, this can also be protected.
A benefit of registered designs is that they are relatively straightforward to obtain (when compared to IP such as trade marks or patents), because their registration is a purely formal process. This means that a registered design is a low-cost way to protect a packaging design or redesign motivated by a switch to eco-friendly materials.
Of course, there are many nuances to design protection, and it is very often useful to obtain professional advice when deciding on your IP strategy and to help you through the registration process.
For example, careful consideration of how to present the design is needed when preparing drawings for registration. In a validity decision reviewed here, a shoe company had used a knitted recycled plastic in place of a previously-used suede material, and the validity of the design turned on how the knitted material was illustrated in drawings using cross-hatching. Meanwhile, a simple change of packaging materials was not protectable in the design validity decision reviewed by Chris Anderson here. In that case, a coffee pouch company’s registered design for a Doypack®-style pouch having a metallised foil material was found to be invalid over a registered a design for a similar package using a matt brown material because the judge considered that the informed user would give more weight to the packaging shape than its material in this particular case.
Another aspect of IP that should be considered is the branding of the updated product design. Often, companies will want to proudly display their sustainability credentials in the branding of their product, and rightly so. Notable examples of this include Coca Cola’s trade mark for their PlantBottle®, or Levi’s Water<Less® denim. Obtaining a trade mark for new aspects of the branding of your product can give you the exclusive right to use these marks in your sector, and so help you create a strong brand identity incorporating the eco-friendly update.
So, whether you are considering making the switch to eco-friendly packaging for your product, or have already done so, you should be sure to consider how these changes affect the IP protection of your product and whether you should be taking steps to secure any new rights that may result from the change. Making sure to consider the IP around a packaging redesign can ensure that the switch to eco-friendly packaging is a commercial success as well as an environmental one.