The term trade dress refers to the overall appearance of a product and its packaging, including its shape and design. In other words, trade dress includes the visual impression given by the product or service as a whole, including its shape, presentation, colours, textures, etc.
This concept is protected by both trademark and unfair competition laws.
Under Uruguayan law, trade dress is regulated by article 15 of Law 16671 of the ADPIC which establishes that “a trademark may be made up of any sign or combination of signs that are capable of distinguishing the goods or services of a company from those of other companies”
In order for a specific trade dress to be eligible for registration as a trademark, it must meet the legal requirements for a sign to be protectable by registration, in other words the combination of signs that constitute the trade dress must be defined as a “whole” that serves to identify the product or service and its origin or extraction. The owner of the trade dress owns the ensemble rather than the individual elements that make up the overall image.
Unregistered use of a certain trade dress has been recognised and, in the same way as trademarks, trade dress forms part of franchise agreements.
If a set of signs were to be protected as trade dress and exclusive rights bestowed on its owners, this might be abusive, because many of the elements making up the overall image may be generic with regard to the products or services they are protecting.
To avoid this abuse, each specific case must be analysed on the basis that if an aspect of a product or service such as a specific shape, design, colour, material or texture is functional, it is not protectable. It will be deemed functional and not protectable if it is essential or substantially related to the use or purpose of the service or product.
In an unprecedented decision, a Court of First Instance has expressly upheld that trade dress is protectable, and ordered a defendant to stop using its trademark in relation to chocolate bonbons with similar packaging, trade dress and presentation as that of the plaintiff’s bonbons, by ordering the defendant to pay compensation for the damages incurred.
This dispute involved a Uruguayan company that imported simile chocolates with a fantasy brand, which were wrapped similarly to the ROCHER trademark chocolates produced by the Italian firm FERRERO.
Ruling No. 79/2012, issued by the Civil Judge in the 19th turn, stated that “the similarity between the bonbons considered in the case leads to confusion”, “looking at both products, the Rocher trademark bonbons and the defendant’s bonbons, the similarity is clear, in terms of the product packaging – its presentation – and also its wrapping paper or dressing”, “Looking at both products’ boxes, we appreciate a notorious similarity between them, both sharing the same shape (rectangular, and the classic tree shape of Ferrero Rocher bonbons). With regard to each unit, there was also a similarity leading to confusion, between the bonbons’ wrapping paper and also the paper liner, which is distinctive of the plaintiff’s trademark. We confirm that this is a case of direct confusion, where the confusingly similar trademarks cover the same products or services, so that the consumer will purchase or hire one of them thinking it is the other.”
Finally, the Court ordered the defendant to pay damages and postponed their liquidation.
It should be noted that the defendant appealed against the decision of the Court of First Instance and that the case is currently being reviewed by the Court of Appeal.
The defendant in this case has also brought an action to invalidate Ferrero’s graphic trademark on the grounds that the packaging is generic.