UK Court Of Appeal Rules on Colour Trade Marks
A recent action brought by Glaxo Wellcome UK Ltd and Glaxo Group Ltd (Glaxo) against Defendant, Sandoz Ltd (Sandoz) backfired when the UK Court of Appeal found in Sandoz favour, holding that Glaxo’s colour registration was invalid.
This case concerned an action brought by Glaxo against Sandoz for infringement of its EU colour trade mark registration No. 3890126 (the Mark).
Glaxo’s Mark was protected in relation to “inhalers” and consisted of the following description: “the trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler”. This description was accompanied by the following image:
Sandoz counterclaimed against Glaxo claiming that its Mark was invalid as it did not meet the necessary requirements for registration. Sandoz argued that the Mark’s representation was not clear nor sufficiently precise and uniform to be capable of graphic representation.
At the High Court, HHJ Hacon held that Glaxo’s Mark was invalid as it did not meet the criteria for graphical representation as stipulated by Article 4 of the EU Trade Mark Regulation (207/2009/EC). HHJ Hacon averred that the proportions of the inhaler to which the two shades of purple would be applied were undefined and therefore could not be regarded as uniform or precise. Sandoz succeeded in its summary judgement application. Glaxo appealed the decision.
On appeal, Glaxo contended that HHJ Hacon omitted from properly interpreting its Mark, contending that the correct interpretation would have resulted in the mark having only one possible meaning namely that it comprised dark and light purple in the specific proportions and arrangement shown in the pictorial representation.
In considering graphical representation of colours, the court referred to previous case law including Libertel and Cadbury where it was established that a colour may satisfy Article 4 where a sample of the colour is filed in conjunction with a verbally clear, precise, self-contained, easily assessable, intelligible and objective description. Kitchin LJ reaffirmed that representation of a mark must encompass both the visual representation and verbal description, stating:
“The verbal description of such a mark is also important and must be taken into account together with the pictorial representation. The graphical representation, comprising both the pictorial representation and the verbal description, must be considered as a whole.” (paragraph 69 of the Judgement).
The Court stated that if a sign resulted in confusion on the part of the public, then the requirements for the sign to be clear, precisely identified and unambiguously and uniformly perceived were not satisfied.
Accordingly, the Court questioned how the colour arrangement could provide a clear indication when terms such as “significant proportion” do not provide a clear definition of coverage nor how the colours would be applied to different shaped goods. As such, it would be difficult to understand with any degree of certainty how the description would be applied, other than to the shape of the inhaler represented on the Mark’s Certificate of Registration. Consequently, the mark lacked the clarity, intelligibility, precision, specificity and accessibility required by law and would not be perceived uniformly and unambiguously by the public. Thus, allowing this registration to stand would result in Glaxo having a far-reaching monopoly and therefore an unfair commercial advantage in this sector. Glaxo’s appeal was dismissed.
The Court of Appeal held that the Mark was invalid and that the case was suitable for summary judgment and upholding the High Court’s ruling. Glaxo dejected by this ruling intend to apply to the Supreme Court for permission to appeal.
Due to the monopoly gained by colour trade marks, the Courts have ensured that the threshold for registering and maintaining these rights remains high.
This case highlights the importance of filing a clear and precise description of how a colour(s) will be applied to a product. Therefore, thorough consideration should be given to the proportions of the goods covered by the colour and how the colour will apply if you intend to use the mark on different shaped goods.
Moreover, this case also reiterates the importance of ensuring that your rights are fully comprehensive and not susceptible to attack prior to taking action against a third party.
Final point, as of 1 October 2017, the current wording of Article 4 of EU Trade Mark Regulation (207/2009/EC) will be replaced, requiring a sign to be capable of being “represented, in a manner which enables the competent authorities and public to determine the clear and precise subject matter of the protection afforded to the proprietor“.
If you have any questions regarding the above case, or would like to discuss trade marks, please contact a member of our Trade Marks Team.