“Cheat packs” in packaging law & exceptions for trade mark and design rights

published on 21 June 2024 I reading time approx. 4 minutes

The German Federal Supreme Court of Justice (Bundesgerichtshof, BGH) recently ruled on the misleading of consumers with regard to packaging size and filling quantity (“deceptive packaging“) under unfair competition law (UWG). The disproportion in the size ratio also plays a role in packaging law from the point of view of sustainability - avoiding packaging waste. What requirements for the minimisation of packaging currently exist and what does the EU packaging regulation (PPWR) provide for? What exceptions to the minimisation obligation are there for design and trademark rights? Rapid action is required, particularly with regard to the registration of these property rights, for companies that want to protect the design or shape of their packaging and thus exempt it from the minimisation obligation. Here, the imminent entry into force of the PPWR is the cut-off date for the granting of such an exemption privilege!

Size ratios for packaging - the minimum size and its restrictions

The size ratio relates firstly to the relationship between primary sales packaging and its contents (e.g. tube of toothpaste), and also between secondary secondary packaging and its product (e.g. folding box with tube of toothpaste). Finally, there is also that between tertiary packaging, such as shipping cartons in online retail or transport packaging and their product contents. The legislator assumes that the “minimum level” of packaging should be as “small” and “economical”as possible in order to achieve the goal of ecologically sustainable “avoidance of packaging waste”.

German Packaging Act - status quo

As a general packaging requirement, the German Packaging Act (VerpackG) stipulates that packaging must be designed in such a way that its size and weight are limited to the minimum appropriate to ensure safety, hygiene and consumer acceptance.

However, these minimum size requirements may conflict with protected designs or three-dimensional trade marks that enjoy protection for a particular packaging design. This may be the case if the protected packaging design goes beyond the permitted minimum size. However, the above-mentioned minimum size requirements and the concept of appropriateness are not further specified in the Packaging Act. In contrast to other “hard” mandatory requirements of the Packaging Act, their violation is also not penalised with a fine. There is therefore currently no need for an exception to the minimum size for existing packaging brands or designs at German level.

European Packaging Regulation

The EU Packaging and Packaging Waste Regulation (PPWR) will significantly change the binding nature of the minimum size requirements and their correction through exemptions for third-party property rights. It also introduces a ban on excessive packaging for certain forms of packaging. The PPWR draft is currently in a harmonised, advanced phase of EU legislation. Even now, however, changes can of course still be made, including to crucial details. With a probable entry into force in 2025, the PPWR would be generally applicable from mid-2026 at the earliest (18 months after entry into force).

Packaging minimisation

According to the “packaging minimisation” requirement, packaging must be “designed [...] in such a way that its weight and volume are reduced to the minimum necessary to ensure its functionality, taking into account the shape and material [...]”. The criteria for the “minimum necessary” are listed in detail in the so-called “performance criteria” (e.g. physical protection, manufacturing process and legal requirements for hygiene, safety or labelling) and must be verified in technical documentation. If these criteria are not met, the packaging may not be placed on the market.

The PPWR minimisation obligation is now only applicable from 1 January 2030, instead of 18 months after entry into force as initially planned. However, additional requirements for more environmentally friendly packaging and its minimisation could already be set out in the specifications for the new Eco-Design Regulation before then. The Eco-Design Regulation itself is about to enter into force and is immediately applicable throughout Europe. Companies should therefore monitor whether stricter requirements for packaging will become applicable in the near future.

Exemptions from the minimisation obligation for “protected“ packaging

Protected geographical indications, trademarks and designs are exempt from the minimisation obligation of the PPWR. However, the exemption for trade marks and designs is linked to certain temporal and content-related requirements:

Already registered IP rights: in order to avoid cases of abuse, the exemption only applies in terms of time to designs and trade marks that are already protected at the time the PPWR comes into force. In this context, it is particularly important for companies to bear in mind that there is a considerable period of time between the PPWR coming into force (20 days after publication in the EU Official Journal) and the application of the minimisation obligation (2030). In any case, this means that IP rights applied for and registered before the entry into force are certainly covered by the exception.

However, the exception only applies

if the minimisation requirements of the PPWR for designs affect the design of the packaging in such a way that the novelty or individual character of the design is changed or
if, in the case of three-dimensional trade marks, the distinctive character of the trade mark is lost as a result of the PPWR minimisation requirements.

These are protection requirements of the respective property rights. As long as these requirements are still met even if the packaging is minimised, the minimisation obligation continues to apply, i.e. the exception does not apply.

In terms of the wording, the minimisation obligation can therefore also apply if the minimised design deviates from the property right registration in such a way that it no longer constitutes an implementation or use of the property right. It is questionable whether this is the intention of the legislator.

Application before entry into force, registration after entry into force: It is also unclear whether the exception applies to IP rights that were applied for before entry into force but only registered after entry into force. One argument in favour of this is that protection generally applies retroactively from the filing date. However, the wording of the regulation, according to which protection must already exist at the time of entry into force, argues against this.

In any case, IP rights applied for and registered after the entry into force are not covered by the PPWR exception. This raises the as yet unresolved question of the effects of the minimisation obligation on trade mark and design law. It remains to be seen whether the offices will check the minimisation obligation in future when the IP rights are applied for or whether IP rights can be challenged after registration with the argument that their use violates the minimisation obligation.

Ban on excessive packaging

Also under the banner of sustainable waste avoidance, the PPWR also introduces additional restrictions on “excessive packaging”. Fillers of outer and transport packaging as well as packaging for online retail must ensure that the proportion of empty space does not exceed 50%. Empty space is the difference between the total volume of the respective packaging and the sales packaging it contains. Space that is filled with filling materials such as bubble wrap, polystyrene chips or wrapping/crumpled paper is considered empty space. This regulation is also only applicable from 1 January 2030, instead of 18 months after coming into force as previously planned.

Conclusion

According to the status quo, the new obligations of the Packaging Ordinance (minimisation obligation and a ban on excessive packaging) will not come into force until 1 January 2030, but any exemptions from the minimisation obligation due to designs and three-dimensional trademarks must be clarified much earlier, i.e. by the time the PPWR comes into force. With regard to legal uncertainties in relation to the application and structure of the exceptions, companies should endeavour to apply for and register these IP rights quickly before the PPWR comes into force. In the case of European applications, registration may still be possible via the so-called FastTrack procedure, which enables registration within a few months. We will be happy to support you with your application with our many years of expertise in trade mark and design law. We will keep you informed about developments and changes to the PPWR on an ongoing basis.