Glaxo’s combination colour trade mark used for Seretide inhalers rejected by High Court

25.07.2016

In a summary judgment in the High Court dated 28 June 2016, His Honour Judge Hacon (sitting as a judge of the High Court) rejected the validity of Glaxo’s combination colour EU trade mark for inhalers (the “Mark”) and dismissed its claims of infringement of the Mark against Sandoz.
The Mark was registered in the form of a photograph, together with 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.”
Sandoz argued that, based on the description, the Mark claimed was not a single sign, but a collection of almost limitless signs. As a consequence of the wide variety of possible signs it encompassed, it was neither a sign nor was it capable of graphical representation as required under Article 4 Trade Mark Regulations (“Article 4”).
In contrast, Glaxo argued that the correct starting point for construing the scope of the Mark was the visual representation (i.e. the photograph) rather than the description and that the single sign being claimed was an abstraction of the visual representation. In the alternative, Glaxo argued that even if the Mark was construed as encompassing more than one sign, these were merely variants of a single sign which is permitted under EU trade mark law.
The two questions of legal principle that arose for HHJ Hacon’s judgment were as follows:
1. How should a trade mark application or registration be construed where there is no strict congruence between (i) the visual representation and (ii) the description, particularly in the context of colour marks?
2. May a colour mark encompass more than one form, i.e. can there be variants without contravening Article 4. If so, how much freedom of variation is possible?
Regarding the first question, HHJ Hacon considered that where there is no consistency between the visual representation and the description, both must be considered– the weight given to each dependent on the circumstances. This was a matter for the court, without reference to the average consumer.
Regarding the second question, colour marks could not be validly composed of variants around a single sign. An EU trade mark must be clear, precise, unambiguous and uniform in order to satisfy Article 4. Whilst very minor variations could exist, they must be insignificant and go unnoticed by an average consumer.
Taking these answers into account, HHJ Hacon considered that the Mark set the reader a “puzzle”. Possible solutions included interpreting the Mark based on (i) its graphical representation (i.e. the photograph) (ii) the abstraction proposed by Glaxo or (iii) the description.
Whilst the judge accepted that the first of these solutions was a single sign, the second and third solutions left the reader uncertain as to the form the Mark takes. In particular, the words “significant proportion” used in the description were too vague to be able to define the precise scope of the mark, in the same way that “predominant colour” wording used by Cadbury for their purple colour mark also failed in their case against Nestle.
This uncertainty, together with the overall “puzzle” set by the registration, meant that the Mark did not meet the requirements of being clear, unambiguous, precise and uniform and was therefore declared invalid under Article 4.
The decision serves as a reminder of the inherent difficulty in protecting and enforcing non-conventional marks, particularly colour marks where the description creates uncertainty as to the scope of the mark. The judgment provides some helpful guidance as to what is deemed unacceptable by the court in this regard.

Tim Heaps

Author