08 August, 2017

Please Clarify - Two-Color Inhaler Trademark not Clear and Precise, says Court of Appeal

Trademarks can offer very powerful rights to rightholders, particularly in more general areas like colors or shapes (color marks have been discussed more here). While one has to appreciate the rights afforded through trademarks, they still have to be narrow and defined enough to attract any rights, as too broad of a mark will undoubtedly fail in registration or will potentially be invalidated after the fact if it slips through the cracks. With this in mind, just how defined do you have to be when you register your mark, both in its graphical representation or the possible descriptions attached to the mark? The UK Court of Appeal took this matter on earlier this summer, giving trademark holders something to chew on.

The case of Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd concerned a trademark registration for an asthma inhaler, and more specifically, its color scheme. The registration consisted of an image of the inhaler, with a descriptor beneath it setting out that "…The trade mark consists of the colour dark purple… applied to a significant proportion of an inhaler, and the colour light purple… applied to the remainder of the inhaler". The inhaler was also sold in a more typical 'boot' shape, which still included the above colors. After discovering that a competitor, Sandoz, had been selling a competing product with a very similar color scheme, Glaxo took the matter to court and sued Sandoz for trademark infringement. Sandoz subsequently counterclaimed for invalidity due to the vague description of the mark, which could be applied to a number of products, not just as was represented in the registration. After a loss at first instance, Glaxo appealed and the matter ended up in the Court of Appeal.

Lord Justice Kitchin, handing down the majority judgment, started with the registration of color trademarks. The CJEU has discussed this in its previous case law, particularly in Libertel Groep and Heidelberger Bauchemie. The cases concluded that a single color or multiple colors applied for as a trademark can be considered as such if "…it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign; and the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way". This means that the colors alone would not be registrable, but, so long as a proper arrangement of them is produced, it is possible to register the colors.

Bill wasn't sure what the mark was at all
The Court highlighted the issues with the descriptions of multiple colors used in various registrations, where wording like "predominant colour applied to the whole visible surface" is used to describe the mark in addition to any graphic representation. This description leaves the mark unclear, as 'predominant' implies the amount of the color used, but leaves the 'how' completely out of it. As Lord Justice Kitchin observed: "…in order to fulfil its role as a trade mark and meet the requirements of precision and clarity, the sign must always be perceived unambiguously and uniformly". Without this the level and extent of protection is unclear, and the mark should not be registered, since "…if the authorities and the public are left in a state of confusion as to the nature of the sign then these requirements will not be satisfied".

Lord Justice Kitchin further noted that, when considering the precise make-up on a mark, one has to consider both the pictorial representation and the description that accompanies it. The description can clarify the mark if the pictorial representation is ambiguous or unclear, potentially making the mark valid. Both the image and the description should be treated as equal in this assessment, and considered as a whole.

The Court then dealt with the three possible interpretations of the mark put forward by Glaxo.

Firstly, Glaxo claimed that the mark consists of the precise arrangement of the dark and light purple colours shown in the pictorial representation, spikes and all. Lord Justice Kitchin swiftly rejected this argument as, to his mind, it would be nearly impossible to tell how the 'spikey' arrangement would be applied to an inhaler. If the shape were simpler, it could be possible to determine how it would be applied or would look like on an inhaler, but the mark, as represented, is unclear in its application. The verbal description remained too general as well, which left the mark wholly imprecise.

Secondly, Glaxo argued that that the abstraction shown in the picture is merely illustrative of the mark. The judge yet again rejected Glaxo's argument, as in his view the abstraction is not clear on its application on the inhaler, and the use of the colors differs in each of the pictures from the others. The verbal description does not illuminate the mark's application any further either, as mentioned above.

Finally, Glaxo argued that the mark consists of any proportions of the dark and light purple colours falling within the terms of the verbal description. Lord Justice Kitchin didn't agree with this argument, and considered that the public and other companies would be "…left in a position of complete uncertainty as to what the protected sign actually is". Ultimately, the judge saw that the mark "…lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands", leaving it unclear to the public at large.

The Court therefore dismissed the appeal, and decided that the trademark was indeed invalid under Article 4 of the Directive.

The case is a very important reminder on the need to be precise and clear when applying for a trademark, particularly if it’s one that is difficult to set out, such as color trademarks. Any applicant should have their mark drafted very carefully, using both the pictorial and verbal descriptions to their full advantage, potentially even showing the mark's application on the products themselves.  In the end, the general nature of the mark was Glaxo's undoing, and this writer would love to see the matter debated in the Supreme Court, but thinks that's very unlikely.

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