Purple inhaler still invalid – Court of Appeal ruling

In 2016, the High Court addressed the issue of whether colours are capable of being registered as trade marks. It held that Glaxo's EU purple-combination colour mark for inhalers was invalid as it was not graphically represented. We blogged on this decision at the time; we are now reporting on the very recent Court of Appeal's decision which rejects Glaxo's appeal.

In 2016, His Honour Judge Hacon, in the High Court, addressed the issue of whether colours are capable of being registered as trade marks. Specifically, HHJ Hacon held that Glaxo's registered EU colour trade mark was invalid as it was not graphically represented as required by Article 4 of the EU Trade Mark Regulation (207/2009/EC) ("the Regulations"). Our blog covering the judgment can be found here.  We now report on the Court of Appeal's judgment which has just been published and rejects Glaxo's appeal: Glaxo Wellcome UK Ltd & Anr v Sandoz Ltd [2017] EWCA Civ 335.

Facts

Glaxo are the registered proprietors of an EU trade mark carrying the following description: "the trade mark consists of the colour dark purple (Panton 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

 

Abstraction

 

Sandoz sought summary judgment on the basis that the trade mark could not be a "sign" under the Regulations because the description for the trade mark covered infinite variations of the trade mark. As such, it lacked the uniformity and unambiguity required for a trade mark to be a "sign".

HHJ Hacon held that Glaxo's trade mark required the "predominant" use of dark purple, meaning there was complete freedom in the required proportion of the two shades. Therefore the registration was not limited to one single "sign" and could not be considered uniform or precise.

Grounds of appeal

On appeal, Glaxo asserted that:

1. HHJ Hacon should have held the trade mark only had one possible meaning, namely dark and light purple in the specific proportions and arrangement shown in the pictorial representation; and

2. The description was in general terms and merely specifies the shades of purple, rather than broadening the scope of the trade mark.

Court of Appeal's judgment

Kitchin LJ gave the leading judgment with which Floyd LJ and Sir Geoffrey Vos agreed. As in the High Court, the Court of Appeal reviewed the previous judgments dealing with the registrability of trade marks comprising one or more colours. This included: Libertel (orange), Heidelberger (blue and yellow), Cadbury (purple) and Red Bull (blue and silver).

Kitchin LJ then went on to consider those judgments which address the need for specificity and certainty in the representation of the trade mark. This included: Dyson (transparent bin), Sieckmann (balsamically fruity smell) and Seven Towns (geometric arrangement of seven block colours).  It was emphasised that if the authorities and the public are left in a state of confusion as to the nature of the sign, then the requirements for the sign to be clear, precisely identified and unambiguously and uniformly perceived are not satisfied.

Kitchin LJ held that the representation of a mark encompasses (i) the visual representation and (ii) any verbal description. The verbal description is important and must be taken into account together with the pictorial representation, as a whole.

Regarding the specific trade mark in question, Kitchin LJ made the following findings:

1. Colours as pictorially represented: the INID code meant the trade mark would be understood to be a colour per se mark. The sign is not limited to the shape of an inhaler and it is impossible to say with any degree of certainty how the mark would be applied to an inhaler. Equally, the description puts the sign in very general terms by stating the trade mark "consists of" dark purple applied to a significant proportion of "an" inhaler and light purple applied to the "remainder".

2. An abstraction of the photographic representation: it was not clear what degree of abstraction should be taken from the pictorial representation. Similarly, the arrangement of the dark and light purple colours is not the same in each possible abstraction, meaning they are not representations of the same sign.

3. Any proportion of light and dark purple within the verbal description: this would leave the public and any economic operators in a position of complete uncertainty as to what the protected sign actually is. The trade mark lacks the clarity, intelligibility, precision, specificity and accessibility required. The mark would not be unanimously and unambiguously perceived by the public.

Consequently, the Court of Appeal held the case was suitable for summary judgment and that the trade mark as registered was invalid. No reference to the CJEU was required.

Comment

Colour marks regularly prove to be problematic and are inherently vulnerable to revocation proceedings. This is because trade mark owners are faced with two conflicting interests. The trade mark is more likely to be registered and/or valid if the application is narrow. However, this limits the scope of protection against look-a-like products and exposes the registration to revocation proceedings for non-use if the owner does not actually use the mark as registered. By contrast, the trade mark owner's rights against third parties are potentially wider where the description is broad, but this risks falling foul of the registration criteria.

Here, the Court of Appeal delivered a thorough and well-reasoned judgment, upholding a pragmatic finding by the High Court. It should be noted that, Article 4 of the Regulations will be replaced on 1 October 2017 with new wording which simply requires the 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". (The same amends to the Trade Marks Directive are due to be implemented by member states by January 2019.) Whilst this may provide further clarity for applicants, the reality is that a sign will still need to be "represented" with sufficient precision and clarity. As such, applicants for colour marks are likely to run into the same issues where the description allows the mark to take a plurality of forms. These issues arise out of the two conflicting interests set out above.

The Court of Appeal noted that the judgment of the EU General Court in the Red Bull v Optimum case (concerning the registration of blue and silver on a 50:50 ratio) is currently awaited, which counsel for Glaxo unsuccessfully asserted as grounds for delaying summary judgment. It is hoped that the CJEU will at some point further clarify the registrability of colour trade marks.