Protecting your packaging, don’t think twice.

Have you registered your packaging as a trademark yet? If not, it might be worth considering to so. In a recent case (Tribunal of Enterprises of Ghent, Division Ghent, 26 August 2020 (A/20/00069)), the Tribunal of Enterprises of Ghent held inadmissible a legal action by which the claimants sought an injunction on the basis of the Belgian provisions on unfair market practices and consumer protection against the placing on the market of a packaging with a similar look and feel as its own packaging, only because the packaging was not registered as a trademark.

The facts and the parties involved

The French company Laboratoires de la Mer (“LDLM”) develops and markets under the name Physiomer a nasal spray consisting of sea water, which is distributed on the Belgian market by the Belgian company Omega Pharma (see product on the right).

Febelco, a Belgian wholesaler and distributor of medicines active on the Belgian market, started commercialising in 2019 a nasal spray also consisting of sea water under the name Febelcare Physio (see packaging on the left). Febelco purchases these products from Axone Pharma, which in turn purchases those from Ceres Pharma, a Belgian company specialising in the development, manufacturing and distribution of, amongst other, medicines and medicinal products.

LDLM and Omega Pharma summoned Febelco and Axome Pharma before the Tribunal of Enterprises of Ghent to obtain an injunction against the placing on the market of the Febecare Physio product in a packaging which resembles the packaging of the Physiomer product. Ceres Pharma joined the proceedings on a voluntary basis.

The legal issue

LDLM and Omega Pharma claim, in essence, that by using such a similar packaging Febelco infringes the Belgian provisions on unfair market practices, and more particularly the prohibition of misleading practices. LDLM and Omega Pharma submits that the packaging of Febelcare Physio is likely to create confusion and lead the consumer to believe that the products are linked.

Ceres Pharma challenged the admissibility of this claim, on the basis of article 2.19 of the Benelux Convention on Intellectual Property (“BCIP”) arguing that the sign invoked by LDLM and Omega Pharma, i.e. their packaging, was not registered although it consisted of a sign deemed to be a trademark.

Article 2.19 of the BCIP provides that, with the exception of the holder of a well-known trademark within the meaning of article 6bis of the Paris Convention, no one may claim in court protection for a sign deemed to be a trademark, regardless of the nature of the action brought. This includes, amongst other, packaging that serve to distinguish the goods or services of an undertaking.

For the purpose of its demonstration, the counsel of Ceres registered as a Benelux trademark a sign consisting of the lay-out of the packaging of the Physiomer product, taking over all the characteristics invoked by the claimants to describe the look and feel of their packaging on the context of the present proceedings.

The reasoning and the ruling

On the issue of the inadmissibility of the claim draw from article 2.19 BCIP, the Tribunal first notes that LDLM and Omega Pharma rely exclusively on rules which are outside the scope of trademark law, whereas on the one hand it has a registered word mark “Physiomer” and, on the other hand, it makes use of a sign which is deemed to be trademark, and should therefore have been registered in order to be able to validly rely on it.

It then points out that the rationale behind article 2.19 BCIP is to avoid the creation of a parallel protection regime outside of the protection regime established by trademark law and finds that by relying on unfair market practices in relation to a sign similar to a sign which is not registered as a trademark, although it could perfectly be registered as such, LDLM and Omega Pharma are trying to obtain for an unregistered sign a protection similar to a trademark protection, hence creating a parallel protection regime.

In essence, the Tribunal considers that a claimant can seek protection under ordinary law, such as unfair market practices, only for a sign which is not regarded as a trademark.

Finally, the Tribunal rejects LDLM and Omega Pharma’s argument that such application of article 2.19 BCIP would be contrary to Article 10bis(3)(1) of the Paris Convention for the Protection of Industrial Property, which prohibits all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor. On this point, it points out that article 2.19 BCIP would only be contrary to article 10bis (3)(1) where the claimant can prove that trademark protection is not available.

The Tribunal infers from the above that to the extent that the claim relies on the protection related to the lay-out used by the LDLM and Omega Pharma for their Physiomer nasal spray packaging, it must be declared inadmissible on the basis of article 2.19 BCIP.

Conclusion

LDLM and Omega Pharma lodged an appeal against this decision, which is currently pending. We’ll have to wait and see whether the Court of Appeal of Ghent will follow the tribunal’s position or not. In the meantime, it might however be wise for businesses to assess whether their packaging could be deemed a trademark and consider filing for trademark protection.