Protecting Aspects of Packaging: Even a Banana Tip

PROTECTING ASPECTS OF PACKAGING –
EVEN A BANANA TIP!
by Sharon Givoni
Having invested a lot of time, money and effort into creating a brand identity for packaging, many
businesses do not realise that they can register as a trade mark that aspect of packaging. This can
give you amazing rights to exclusively use that aspect of packaging and can extend as far as a wax tip
of a banana as recent dispute that was settled recently demonstrates...read on for the facts.
Unusual and novel aspects of packaging are being increasingly used by companies to stand out.
For example, think hexagonal prism, its Toblerone; SILVER packaging for cream cheese translates to Philadelphia;
a distinctive deep purple for block chocolate is Cadbury and a curvaceous, fluted bottle. You guessed it. Coca Cola.
In the UK, the particular shade of turquoise used on cans of Heinz baked beans can only be used by the H. J.
Heinz Company for that product. In the US, while it is generally harder to get trade mark protection over packaging,
a successful case granting colour protection involved the use of the colour red for cans of tile mastic (used to adhere
tiles to a surface).
The common feature these marks share is that they usually supported by a marketing campaign that makes them
synonymous with a particular product and source. The aspect of packaging equates to a brand in its own right so
that you see it and know what product it is.
In the case of TOBLERONE, Kraft ran a marketing campaign with a series of images showing people eating
Toberlone. Each one showed people with a triangular bulge in their cheek and the question ‘What?’ as if the chocolate
was so good they could not concentrate on anything but eating it. The association between the triangular bulge on
a cheek was reinforced as that of the Toblerone brand.
Moving from chocolate to fresh products such as fruit, this is one area where there has been less focus on
branding and aspects of packaging. However, a recent dispute between two farmers is a reminder that you can
create valuable trade mark rights in the way you package and present fruit which is what happened in the case of
red wax tip bananas earlier this year.
What happened
Queensland farmers, Frank and Dianne Sciacca, operate their successful Pacific Coast Eco Bananas (Pacific
Coast) business using a sustainable and ecologically natural farming system known as ‘ecoganic’.
To communicate the message that their bananas have special qualities, they dipped their bananas in food grade
coloured wax and ultimately obtained trade mark registration over this ‘aspect of packaging’ of their bananas. Today
they own four registered trade marks.
In September 2010, Pacific Coast discovered that another banana grower, Greg Worth, had started supplying
bananas with purple wax tippings, even going as far as to apply for his own trade mark for purple wax tips on
bananas.
They commenced trade mark infringement proceedings in the Federal Court culminating in Orders (by consent)
recently obtained in the Federal Court restraining Mr Worth and his companies from selling or supplying bananas
with wax tippings and dismissing Mr Worth’s challenge to Pacific Coast’s trade mark registrations.
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PROTECTING ASPECTS OF PACKAGING –
EVEN A BANANA TIP!
by Sharon Givoni
He and his company agreed to stop ‘marketing, promoting, selling, supplying or offering for sale within Australia
fresh bananas’ with the contrasting coloured tip. He also had a hefty legal bill to pay.
The case serves as a lesson to all fruit growers and the food industry generally: If you are inspired by someone
else’s brand or business idea, don’t slavishly copy it or get too close. This can result in the risk of trade mark
infringement and costly and embarrassing consequences.
Other companies that have succeeded in obtaining trade mark registrations aspects of packaging include:
• (Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) has registered the particular shade of its ‘Whiskas Purple’
(CMYK: cyan 40%, magenta 100%) as a trade mark for its range of cat food packaging despite an intial challenge
by Nestle which had objected to the trade mark being registered;
• Cadbury has (after some ten years of trying) gained exclusivity over use of some shades of purple (including PMS
2685C in the Pantone Colour Formula Guide) despite a challenge along they way by Darrell Lea Chocolate Shops
Pty Limited (Cadbury was able to demonstrate that the colour purple has been used as a corporate colour since
the 1920s and from a decade later for ‘Dairy Milk’ moulded chocolate blocks and ‘Milk Tray’ boxed chocolates;
• FERRERO S.P.A. has register the shape and colours of its Ferrero Roche
• chocolate ball packaging being LIGHT BROWN, DARK BROWN and BLACK and its ‘Kinder Surprise’ shape for
chocolate eggs in WHITE and RED-ORANGE, the registrations of which are both pictured below:
Disclaimer – The contents of this article do not replace tailored legal advice
*Sharon Givoni runs her own legal practice in the areas of intellectual property law, packaging and labelling laws
and commercial law.
Sharon Givoni
sharon@iplegal.com.au
www.sharongivoni.com.au
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