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Purple inhaler not valid

His Honour Judge Hacon, sitting in the High Court, has recently handed down the latest judgment to address the issue of whether colours are capable of being registered as trade marks. Although theoretically capable of registration under EU law, colour marks regularly prove to be problematic and are inherently vulnerable to cancellation proceedings. The difficulty is driven by the fact that, in order to be registered, the trade mark must be a "sign" capable of "graphic representation". A key rationale for these requirements is to create certainty around what, precisely, the registration protects.

Glaxo Wellcome UK Ltd & Anr -v- Sandoz Ltd [2016] EWHC 1537 (Ch)

His Honour Judge Hacon, sitting in the High Court, has recently handed down the latest judgment to address the issue of whether colours are capable of being registered as trade marks. Although theoretically capable of registration under Council Regulation 207/2009 ("Trade mark Regulations) and Directive 2008/95/EC ("Trade mark Directive"), colour marks regularly prove to be problematic and are inherently vulnerable to cancellation proceedings. The difficulty is driven by the fact that, in order to be registered, the trade mark must be a "sign" capable of "graphic representation". A key rationale for these requirements is to create certainty around what, precisely, the registration protects.

The Facts

Glaxo were the registered proprietors of an EU Trade mark which carried 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". The INID number attaching to the registration was code 558; "mark consisting exclusively of one or several colours". Finally, a visual representation (a photograph) for the trade mark had also been filed:

              Image filed   

Despite the visual representation, it was common ground that the trade mark was not a figurative mark; rather it was a colour mark (specifically, the combination of light purple and dark purple). Sandoz therefore argued that the trade mark could not be a "sign" because the description for the trade mark covered the "predominant" use of dark purple, with the remainder being "light purple". The infinite variations of the trade mark meant it lacked the uniformity and unambiguousness required for a trade mark to be a "sign". Glaxo argued that an abstraction had to be drawn from the photographic image filed and it was this that constituted the "sign" for the purpose of the registration. The abstraction was sufficiently uniform and unambiguous. 

            Abstraction 

The Judgment

HHJ Hacon began by considering the prior case law concerning the registration of colours as trade marks.

In Libertel (a case concerning the registration of a shade of red) the ECJ set out 3 conditions which colours must satisfy in order to constitute a trade mark: (1) they must be a sign; (2) that sign must be capable of graphic representation; and (3) that sign must be capable of distinguishing the goods and services of an undertaking.

In Heidelberger (a case involving the registration of blue and yellow in 'any conceivable form') the ECJ held a "sign" must always be perceived unambiguously and uniformly in order to ensure the trade mark can guarantee the origin of the good to which it is affixed; the mere juxtaposition of two colours, without shape or contour, does not exhibit the qualities of precision and uniformity. This is because such representations would allow numerous combinations.

In Nestle v Cadbury (a case involving the registration of purple as a "predominant colour" applied to a surface) the Court of Appeal stated that the identification requirements of a trade mark could take on a multitude of different appearances.

Lastly, in Red Bull v Optimum (a case concerning the registration of blue and silver on a 50:50 ratio) the OHIM (as it then was) Board of Appeal held that the description provided with the visible representation of the trade mark may be indispensable when defining the sign's subject matter. In this case, the mere indication of a ratio in the description allowed the arrangement of the colours in numerous different combinations which meant it could not be a predetermined, uniform application.

HHJ Hacon reasoned that he had 2 questions to decide:

  1. How was a trade mark application/registration to be construed where there is no strict congruence between the visual representation and the description particularly for "colour per se" marks; trade marks consisting exclusively on one or more colours; and
  2. Whether a colour mark may encompass more than one form without contravening Article 4 of the Trade mark Regulations.

Regarding the first question, HHJ Hacon held that there was no precedence between the visual representation and the description. The INID code 558 meant that the mark consisted exclusively of one or more colours and the role of the Court was to reconcile the visual representation and description if there was no strict congruence between them.

Regarding the second question, HHJ Hacon held that very minor variations of a "sign" may exist but they should be insignificant and go unnoticed by the average consumer. This mirrored the infringement criteria under Article 9 of the Trade mark Regulations whereby a mark is to be regarded as "identical" if it contains differences so insignificant that they may go unnoticed by an average consumer. HHJ Hacon therefore rejected Glaxo's argument that a trade mark could be validly composed of variants of a single sign; in this regard, Glaxo had attempted to rely on Apple Inc's 3-D mark registered for the design and layout of a store, which was inevitably open to variants as it didn't include specific dimensions.

Glaxo's mark consisted of the colour dark purple applied to a significant part of an inhaler. However, the visual representation of the mark was a photograph of an inhaler which, whilst suitable for a 3-D trade mark, was unsuitable for a colour mark. This meant the Court must rely on the description. As the description required the "predominant" use of dark purple, there was complete freedom in the required proportion of the 2 shades. The Court cannot use an abstraction of the photograph (see below) because the shape of the abstractions could be different; in EUIPO proceedings Glaxo had relied on a rectangular abstraction, meaning the proportion of dark purple and light purple was different. The abstraction could be truer to the original photograph or more abstract. Therefore the registration is not limited to one single "sign" and cannot be considered uniform or precise.

Analysis

The case is a prime example of the difficulty trade mark owners have in registering a colour mark. The difficulty exists because proprietors are faced with 2 conflicting interests:

  • the trade mark is more likely to be registered and/or valid if the application is narrowly drafted, ensuring that the colour mark is precise and uniform. However, this limits the extent of the trade mark proprietor's rights to use the colour and therefore guard against infringement from look-a-like products. The trade mark is also vulnerable to revocation proceedings for non-use should the proprietor stray beyond the precise perimeters of the trade mark.
  • the trade mark proprietor's rights against infringers are wider where the description is vaguer. Wording such as 'any conceivable form' (Heidelberger) 'predominant colour' (Cadbury), 'a ratio of 50:50' (Red Bull) and 'significant proportion' (Glaxo) are all attempts at ensuring infringers cannot easily side step trade mark protection by stepping outside of the narrower perimeters of a precisely defined colour mark.

The Trade Mark Reforms

In the body of his judgment, HHJ Hacon mentioned the pending reforms to the Trade Mark Regulations and Trade Mark Directive (i.e. Article 4 of Regulation 2015/2424), due to come into force on 01 October 2017. Following Brexit, it is unclear as to whether or not these reforms will be implemented in the UK, however it is worth considering what effect they could have on the registration of colour marks. Under the reforms, Article 4 of the Trade Mark Regulations would read:

"A European Union trade mark may consist of any signs…including… colours…provided that such signs are capable of:

(a) distinguishing the goods or services of one undertaking from those of other undertakings; and

(b) being represented on the Register of European Union trade marks, hereinafter 'the Register', in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."

Whilst a sign no longer requires "graphic representation", there is still a requirement for the trademark to be capable of being "represented" in a manner which determines the subject matter clearly and precisely. The use of 'significant proportion' (dark purple) and 'the remainder' (light purple) in the description of Glaxo's registered trademark would, arguably, still fall foul of the reformed Article 4 for lacking clarity and precision due to the multitude of possible variations. In this sense, Glaxo would be forced to apply for a colour mark per se; that is, a monopoly over the 2 colours regardless of their arrangement. However, removing the description and simply relying on the two pantone codes would, arguably, be insufficient to distinguish the goods or services of the proprietor without confining the arrangement or juxtaposition of the two colours. Glaxo would have to show that consumers associated the two colours, when seen together and regardless of their arrangement, with their goods or services. This would be an onerous task indeed.

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