THE
The company
Image source: The Gaurdian
The Swiss court held that
The court held that the destruction of the product was justified. Yet unusually it went on to say that this "does not necessarily mean that the chocolate as such would have to be destroyed", suggesting it could be melted down and used in other ways. It's not clear if this shape-shifting advice was taken up.
ELSEWHERE IN
The enforcement of the IP rights in the chocolate bunny has been a bit of a mixed bag for
Yet, despite having various national trade mark registrations for its product shape,
It's worth bearing in mind that EU trade mark authorities take the view that consumers are less likely to see the shape of a product as an indicator of commercial origin than a brand name or logo. They generally require proof that the shape has been around for some time, and that it also departs significantly from the norms of the industry.
SUPERMARKET LOOK-A-LIKES AND COLIN THE
Cases like this are a stark reminder of how big the issue of supermarket look-a-likes is. South Africans are sometimes amazed when they see how blatant the copying can be in places like the
Image source: Wikimedia commons
The issue of supermarket look-a-likes is less of a thing in
Trade mark infringement
If the company whose brand is being copied has done the sensible thing and obtained a trade mark registration for the particular get-up or packaging (like a shape or colour trade mark), it will be able to respond by suing for trade mark infringement. It's worth noting that the definition of a "mark" in the South African Trade Marks Act, 1993 is very wide:
"Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforesaid."
Passing off
Even without a trade mark registration, the brand owner may be able to sue for passing off, but it is important to remember that a passing off case can be far more difficult than a trade mark infringement case because it requires proof of reputation/goodwill.
Unlawful competition
Passing off forms part of the wider field of unlawful competition. Unlawful competition covers somewhat vague and elastic notions such as the general sense of justice, fair play and the morals and ethics of the particular business community.
There have been cases that have suggested that the copying of a competitor's product shape or appearance might constitute unlawful competition if the motive is to harm the competitor rather than to grow the company's own business.
Registered designs
When it comes to product appearance protection, a design registration is, of course, an option. It's important to bear in mind that registration is only possible if the shape is new, which means that you can't first test the product in the market and then seek registration. There is no examination as to substance so the application is almost bound to succeed, although it can be challenged after registration. The owner of a registration can stop others from using the registered shape for goods of that type. Design registration is time-limited to 15 years maximum.
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.
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