Many readers will be aware that regulations in the European Union (“EU”) are stringent and closely monitored. One of the things that will shortly be monitored and regulated is the use of product packaging which is only aimed at increasing the perceived volume of the product, such as double walls, false bottoms, and unnecessary layers. This pressing issue will be dealt with in new legislation, the Packaging & Packaging Waste Regulation (“the Regulation”).
I'm conscious of the fact that my use of the terms ‘pressing issue' and ‘major development' may possibly suggest a smidgin of cynicism on my part, specifically to an Intellectual Property (“IP”) owner who makes use of double walls, false bottoms, and extra layers in their packaging for distinguishing purposes. Fortunately, for those of us who have a keen interest in the protection of IP and a sustainable future, the Regulation attempts to strike a balance between the protection of proprietary rights and a sustainable future, by providing for certain exclusions in Article 10 (packaging minimisation).
So what will the packaging minimisation requirements look like?
If the Regulation goes through brand owners will need to make sure that their packaging is designed in such a way that its weight and volume are kept to the bare minimum for ensuring its functionality, but also bearing in mind the shape of, and materials used in, the packaging. Packaging that is aimed simply at increasing the perceived volume of the product will not be allowed. In other words, don't ‘big it up'.
What do the requirements apply to?
The answer is simple – all packaging is placed on the EU market, no matter where it was produced!
Exemptions from packaging minimisation (the requirement that packaging be kept small)
There are two exemptions in the Regulation. The first one is a technical one that deals with performance criteria as set out in Annex IV of the Regulation. This allows packaging that is designed to achieve certain functions such as protection and transport of the product. But it also makes clear that fanciful and/or superfluous packaging is not OK.
The second exemption deals with packaging that is protected by certain IP rights and, in particular:
- Packaging designs protected as Community Designs or national member state designs, including designs protected under international agreements having effect in an EU member state;
- Packaging shapes protected as European Union Trade Marks (“EUTMs”), including trade marks registered under international agreements and having effect in any EU state;
- Packaged products protected by a Geographical Indication (“GI”) or quality scheme under EU legislation.
In order for the exemption to apply, the IP registration must be in place by the time the Regulation comes into force.
Register your IP, but do it fast
Brand owners should therefore give thoughtful consideration to registering their most important packaging designs in the EU which can be done by way of both trade marks and designs. But brand owners cannot afford to tarry - only fanciful packaging designs that are protected at the time that the Regulation comes into place will be exempted from the packaging minimisation requirements that are contained in the Regulation.
Timing
There is no time to waste - we are told that the Regulation might be adopted by May 2024, although it probably won't enter into force until autumn 2024 (so September/ November). The packaging minimization requirements are, however, only due to apply from 1 January 2030, although only packaging designs protected as either trade marks or designs on the date that the Regulation comes into force (the projected adoption date) will benefit from the exemption.
So, what happens next?
Affected businesses need to protect their product shapes as registered trade marks in the EU, and to do so pronto. Registering shape trade marks in the EU (or anywhere in the world for that matter) can be difficult and careful consideration should be given to the issue of whether the shape is sufficiently distinctive for trade mark protection. National trade mark rights might also be worth considering – in certain EU countries, a trade mark application can go through in less than a month.
Another option put forward is for companies to seek EU-registered design protection, bearing in mind the novelty requirement, which is that designs made available to the public more than a year ago are not registerable.
Finally
IP law keeps on evolving and this is simply a further European IP (and indeed societal) development that IP owners will need to take account of. Brand owners should seek legal advice and do so promptly.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.