A trade dress is the commercial image, look and feel, of a product or service that identifies its source and distinguishes it from others.
It can consist of size, shape, colour, texture, etc. as long as its elements are not functional and may include, for instance, the design or packaging of a product or the decoration or environment in which services are provided.
An original look and feel can be a great selling point for a product or service as well as an easy way for costumers to recognize a trademark without having to look at its name. This originality should be protected to prevent a trade dress from being copied or infringed by third parties.
Trade dress may afford protection as trademark, design and/or copyright depending on the jurisdiction. Taking into consideration the EU legislation:
- Trademarks offer a stronger and, in principle, endless protection since they are renewable for an unlimited period. Moreover, disclosure or pre-publication are not an issue for their registration and their relevant public is the average consumer instead of an informed user of the designs. However, it may be difficult to obtain their registration since a trade dress has to be inherently distinctive or have acquired distinctiveness through its use.
- Registered designs will only be an option in case they are filed before the trade dress becomes public, or within the first year after its disclosure. Therefore, the trade dress owner will have to look carefully in advance at what they want to protect and how. Obtaining their registration is not as demanding as obtaining the registration of a EU trademark since there is no need to proof their distinctiveness.
- Copyrights have the benefit of being automatic and no registration is required although it is crucial to properly document the design process and ensure that the copyright is transferred or licensed to the right party.
Let’s see what other parties have done to protect their trade dresses:
Some years ago, APPLE INC obtained the registration in the US of a 3D trademark depicting their iconic store design
for “retail store services featuring computers, computer software, computer peripherals, mobile phones, consumer electronics and related accessories and demonstrations of products relating thereto” in class 35 and decided to extend its protection internationally under the Madrid Agreement. International trademark no. 1060321 faced several obstacles but was granted in Benelux, China, Spain, France, UK, Israel, Italy, Monaco and Poland.
PARFOIS filed various views of its stores as a Community design (RCD):
that survived invalidity attacks at the EUIPO Boards of Appeal based on earlier store designs since the Office considered that the PARFOIS designs were both novel and had individual character.
The Dutch high-end shoe retailer SHOEBALOO prides itself on showcasing its collections in unique stores with a distinctive look and feel. For two of its stores, the firm designed a wall layout inspired by the American Antelope Canyons.
After the stores’ launch, the Belgian company INVERT opened a shoe store in Antwerp with a similar interior design. SHOEBALOO brought the case before the District Court of The Hague, which concluded that, in light of the design heritage, the particular combination of features incorporated in the SHOEBALOO store design merits copyright protection.
If you think your look and feel is original and deserves protection under IP rights, we’ll be glad to assist you.
Article by Menchu Pérez
