TM registration of packaging: obligation to register reaffirmed
On 14 March 2022, the Court of Appeal of Ghent ruled on a case concerning allegedly confusing and parasitic copy of packaging. In this case, the Court confirmed the principle of the obligation to register pursuant to art. 2.19 BCIP and stated that the claimants could not seek trademark protection for a sign which they did not register as a trademark, ruling the claim inadmissible.
The facts underlying the case were as follows: A French manufacturer of a nasal spray containing seawater -together with the distributor of the product -brought an action against a Belgian cooperative wholesaler and its supplier. This Belgian wholesaler launched a nasal spray in 2019 which also contained seawater. In its claim, the French manufacturer argued that the packaging of the nasal spray of the Belgian wholesaler is misleading and a parasitic copy of the packaging of the nasal spray of the French manufacturer. They argued, inter alia, that the packaging of the nasal spray of the Belgian wholesaler is visually very similar to that of the French manufacturer.
In its defense, the Belgian wholesaler argued that the claims of the French manufacturer and its distributor were inadmissible based on Article 2.19  of the Benelux Convention on Intellectual Property (BCIP). Namely, the French manufacturer and its distributor were de facto seeking trademark protection for a sign (in this case the packaging of the nasal spray of the French manufacturer) without having a registered trademark for the design of their packaging, although the sign was perfectly eligible for trademark registration pursuant to art. 2.1. BCIP.
The judge at first instance (Commercial Court of Ghent) ruled in favor of the Belgian wholesaler and declared the claim inadmissible on the abovementioned grounds. The Court of Appeal of Ghent agreed with that judgment and stated that the packaging was eligible for registration as a trademark, so that the French manufacturer and its distributor were essentially claiming trademark protection for a sign that had not been registered, regardless of how they qualified their claim.
Purely for the sake of completeness the Court also addressed the arguments of the French manufacturer and its distributor regarding the (alleged) infringements of market practices. According to the Court there was no likelihood of confusion or misleading because the dominant and distinguishing elements of the packaging of both parties were either different (word elements) or insufficiently distinctive (image of the sea wave and the color blue).
This ruling by the Court of appeal of Ghent reaffirms the importance of registering signs, such as packaging, that are eligible for protection as a trademark in case you want to protect it against copying by competitors.
 Art. 2.19, 1 BCIP (available at https://wipolex.wipo.int/en/text/578525): “With the exception of the holder of a trademark which is well known within the meaning of Article 6bis of the Paris Convention, and regardless of the nature of the action brought, no one may claim in court protection for a sign deemed to be a trademark as defined in Article 2.1, unless that claimant can provide evidence of registration of the trademark which it has filed.”
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