Brand owners need to act now to secure their continued right to use distinctive packaging designs in the EU

What's the issue?

We have already written about how the proposed new EU Packaging & Packaging Waste Regulation could restrict the ability of brand owners to use distinctive and fanciful product packaging in the EU. Now that the Regulation is nearing adoption, brand owners should consider applying to register key packaging designs as trade marks and/or designs in the EU. Only fanciful packaging designs that are protected at the time the Regulation comes into force will be exempted from the packaging minimisation requirements in the Regulation.

What does the Regulation say about packaging minimisation?

If enacted, the Regulation will impose requirements on all manufacturers and importers to ensure that packaging placed on the market is designed so that its weight and volume is reduced to the minimum necessary for ensuring its functionality taking account of the shape and material that the packaging is made of. They must also ensure that packaging with characteristics that are only aimed at increasing the perceived volume of a product is not placed on the market. 

The obligations apply to all packaging placed on the EU market (irrespective of where that packaging is produced). Those who have packaging or packaged products designed and/or manufactured under their own name or mark (ie most brand owners) will typically be considered manufacturers. 

The only exemptions are for:

• Packaging which complies with the performance criteria in Annex IV of the Regulation. This allows packaging to be designed in such a way as to achieve certain functions (including protecting and safely transporting the product). It does not allow the use of fanciful packaging of itself. Indeed, the Recitals to the Regulation state that, “While marketing and consumer acceptance remain relevant for packaging design, they should not be part of performance criteria justifying on their own additional packaging weight and volume.” and that “… superfluous packaging not necessary for ensuring packaging functionality…” should not be put on the EU market.       
• Packaging protected by certain intellectual property rights. These are (a) packaging designs protected as Community Designs under Regulation 6/2002 or as national member state designs under Directive 98/71/EC, including designs protected under international agreements having effect in any EU member state, (b) packaging shapes protected as EUTMs under Regulation 2017/1001 or as national member state trade marks under Directive 2015/2436, including trade marks registered under international agreements having effect in any EU member state and (c) packaged products or beverages protected by a geographical indication or quality scheme under EU legislation. However, to benefit from the exemption, trade mark and design protection must be in place by the time the Regulation comes into force.  

When is this happening?

A compromise version of the Regulation is expected to be finally adopted by the EU Parliament and Council by early May 2024. Given the EU elections in June 2024, and the fact that the new EU Parliament will have to approve the Regulation, it will probably not enter into force until autumn 2024.  

While the packaging minimisation requirements only apply from 1 January 2030, only packaging designs protected as trade marks and/or designs on the date the Regulation comes into force (expected, autumn 2024) will be able to benefit from the exemption. 

What should brand owners do?

To safeguard their ability to continue to use fanciful packaging shapes (which do not otherwise meet the Annex IV performance criteria), brand owners should consider protecting those shapes as registered trade marks and/or designs in the EU now. 

• Since obtaining registered protection for shape trade marks can be difficult, advice should be sought on whether specific shapes are sufficiently distinctive for registration and - if not - the options. EU trade marks can take a minimum of about four months to register. Since national rights can suffice to benefit from the exemption, applications in Austria or Germany are worth considering. Registration there can often be obtained within 14 days of filing (assuming no objections).     
• EU registered design protection can be an easier - and reasonably priced - option. However, bear in mind that (a) designs made available to the public more than a year ago will not be registrable (due to lack of novelty) and (b) designs can only be registered for a maximum of 25 years (at which point the exemption would fall away) whereas trade mark registrations can potentially last indefinitely. 

Does the Regulation prohibit the use of particular packaging shapes?

The compromise text allows for the shape and material of the packaging to be taken into account when applying the minimisation obligation (although the wording could be clearer). This should mean that the minimisation obligation does not prohibit the use of specific packaging shapes of themselves (eg a hexagon shape for a perfume bottle).

What else? 

European standardisation organisations will be asked to prepare or update harmonised standards for compliance (including specifying maximum adequate weight and volume limits) with these requirements. 

In due course, brand owners will need to plan for compliance with the packaging minimisation and other considerable obligations in the Regulation. 

Please get in touch with Roland Mallinson, Giles Crown or your usual Taylor Wessing contact if you would like to know more.