The design or shape of a product can be synonymous with the branding and
image of a company and can become an asset with monetary value that could
increase. If you do not apply for protection others may benefit from your
investments.
Several remedies can be used and sometimes cumulated to achieve such a
protection.
Trademark registration is the easiest and perhaps best way to protect the
trade dress of a product in France. Indeed, according to our Intellectual
Property Code, "figurative signs such as devices, labels, seals, selvedges,
reliefs, holograms, logos, synthesized images, shapes, particularly those of a
product or its packaging, those that identify a service, arrangements,
combinations or shades of color" may be protected as a trademark.
The shape of the bottle of Perrier water and the shade of the yellow Kodak
color are protected as trademarks in France. To be registrable, such a
trademark must of course meet the general conditions of validity, namely be
distinctive. In addition, it must not be :
- a sign which consists exclusively in the shape imposed by the nature or
function of the goods,
- a shape which is necessary to obtain a technical result,
- a shape which gives their substantial value to the goods.
It is to be noted that until now the French practice is much more liberal
than that of other European countries and of the OHIM since single shades of
colors, combinations of colors and 3D marks do not face any objection for non
distinctiveness from the Trademark Office.
If the shape gives their substantial value to the goods, the trade dress
should be registered as a design. Under the new provisions of the law resulting
from the European Community harmonization Directive, "is protected by a design
the appearance of the whole or a part of a product resulting from the features
of, in particular, the lines, contours, colors, shape, textures and/or
materials of the product itself and/or its ornamentation".
In this framework, "is considered as a product any industrial or handicraft
item, including inter alia (…) packaging, get-up, graphic symbols and
typographic typefaces (…)".
Design protection is now subject to two conditions being met : the
design has to be new and must have an "individual character". This means that
the overall visual impression produced by the design on the informed user must
differ from that produced by any prior design. The design protection extends
only to non functional features. In addition, to be novel a design application
must be registered within one year after its disclosure.
If the get-up of the product has been disclosed more than a year ago, so
that no design application can be filed anymore, protection may be claimed on
the basis of copyright.
Indeed, copyright protection is afforded to all works of the mind, whatever
their kind, form of expression, merit or purpose, provided that they are
original in character. The advantage of copyright in France is that the author
of an original work or his rightful claimants shall enjoy in that work
exclusive rights stemming from his creation, without formality requirement.
A second way to achieve a similar protection to trade dress against copy
consists in relying upon regulations on general tort to bring an action for
unfair or parasitic competition. Such an action implies that three conditions
are met, namely a fault committed by one defendant, a damage caused to the
plaintiff and a link establishing that the damage results from the fault.
Thus, there still is a mean of protection, even when the involved trade
dress cannot be protected by design registration or copyright.
Finally, a last way to prevent third parties from copying some unique
features of the "feel and look" of a product is the tort action for parasitism.
This remedy has been created by the case law to condemn those who try to take
advantage of the work and investments of others or to catch their notoriety to
divert them to their own benefit, avoiding so investment of time and money for
creation and promotion.
The characteristic and advantage of such an action is that it applies to non
competitors.
In conclusion, although there does not exist in France a single legal basis
for the protection of the trade dress of products, there are several strong
remedies, even though it is sometimes necessary to cumulate them to take action
successfully.