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.

Seeing Red - Registration of Red Shoe Sole Potentially Invalid, Says AG Szpunar

The color of a product or a logo can often be just as memorable as its shape, design or quality. When you think of a Coca Cola bottle, do you think of the color red? If you see a chocolate bar draped in purple, do you think of Cadbury? Colors are a great differentiator, and the more striking the color the more you tend to probably remember it. That's why many companies register a particular color as a trademark in relation to their goods or services, protecting that very association from competitors. In a similar vein, could you register a trademark that incorporates a color with your product, for example in conjunction with a shoe? A recent case involving this has been going through the European courts, and the Advocate General has finally given their two cents on the matter ahead of the CJEU's decision.

The case of Christian Louboutin SAS v Van Haren Schoenen BV concerns the registration of a mark in Benelux by Louboutin, comprising of a high-heel shoe with a red sole. Only the sole was registered. Van Haren made and sold similar red-soled shoes, and upon identifying this, Louboutin took the company to court for trademark infringement. Van Haren challenged the infringement opposing the mark's registration, claiming invalidity. Having made its way through the Dutch courts, the case ultimately ended up with the CJEU, and prior to their judgment Advocate General Szpunar aimed to give the court guidance on the issue.

The question referred to the Court was "[i]s the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95... limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?" In essence, the question asks whether a 'shape', as defined in the Directive, can include colors as well as the actual three-dimensional shape of an object.

The Advocate General first considered the classification of the mark and its impact on the registration. He determined that the classification of the contested mark is a factual assessment to be made by the referring court. That consideration does not prevent the CJEU from making remarks which may guide that court in making its assessment. He also saw that the classification of the goods does not necessarily have any legal consequences regarding the goods. Even if the mark is a 'position mark', which some parties argued it was, it doesn’t prevent that mark from consisting of the shape of the goods (i.e. the color). He then concluded that "…it is for the referring court to determine whether the mark at issue in the present case is a per se colour mark or a mark consisting of the shape of the goods, but also seeking protection for a colour".

To determine whether the mark is a color mark per say, or consists of the shape of the goods, as defined in the Directive, the Advocate General set out the test as "…the referring court should carry out an overall assessment, taking into account the graphic representation and any descriptions filed at the time of application for registration, as well as other material relevant to identifying the essential characteristics of the contested mark, where applicable". One would also have to account for whether the mark was registered as for the color only, or if the shape was incorporated in the registration as a part of the color.



The CJEU could impede Cindy's new color schemes 

The Advocate General rejected that the color, albeit restricted from applying to a particular shape, would not in itself limit the mark to simply a color mark. Instead "…what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods". Therefore the Advocate General accepts that it is possible for the mark to apply to the position of the color as well.

When considering the actual mark that was registered, the Advocate General saw that, even though the contours of the shoe were not a part of the registered mark, its placement on the shoe was very relevant. The mark sought to protect simply a red sole on any high-heeled shoe, irrespective of its shape. He finally thought that "…[t]he contours of the sole appear in any event to be a negligible element of the mark, which derives its distinctive character from the unusual positioning of the coloured element and, potentially, the colour contrast between different parts of the shoe".

Although the Advocate General considered that the mark, at least on the outset, would be one that consists of a shape in conjunction with the color, he still aimed to analyse both possible outcomes in more depth.

Firstly, whether the mark consists of a color per say. As established in previous cases, colors per say don't have distinctive character; however, they may become distinctive through use. The registration, even so, shouldn't prevent other proprietors from using the color for goods of a similar type. The Advocate General ultimately concluded that "…if the contested mark were to be classified as a ‘mark consisting of a colour per se’, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e)".

Secondly, whether the mark consisting of the shape of the goods and of a certain colour. The Advocate General set out that, to answer whether a mark consists of both the shape and the color applied to it, one has to heed the logic and scheme of Article 3(1)(e), i.e. to prevent the registration of marks that would impede fair competition. The Advocate general considered that any shape that incorporates color in the mark would have to be analysed under Article 3(1)(e) as a part of the overall assessment of the sign. This would apply even under the new Directive.

He concluded that "… Article 3(1)(e) of [the] Directive… does potentially apply to signs consisting of the shape of the goods which seek protection for a certain colour". The mark in question would also be, in his view, potentially caught by the Article and therefore invalid. He also observed that, while the color potentially does add value to the mark (and potentially falls under Article 3(1)(e)(iii)), the value added only relates to the intrinsic value of the shape (for example, is it commonly used and therefore valuable) and not the reputation of the proprietor or the mark.

The Advocate General clearly sets the stage for the CJEU to find that color marks applied to a particular shape would be invalid, as the protection of a color to an indeterminate amount of soles could prevent fair competition. Less conventional trademarks could be hindered by a negative decision by the CJEU, and it remains to be seen how they navigate this paradigm in the light of the expansion of registrations through the new Directive 2015/2436. Should the shape be taken into account the mark could survive, but it looks like Louboutin might have to simply rely on their goodwill in passing off in the future.

Get a Grip - CJEU Decides on 'Hybrid' EUTMs With Technical and Decorative Features

The registration of trademarks can be quite finicky, especially when it comes to the nuance of graphical representation and what it covers (the Trunki case being a poignant reminder in the UK of the same in registered designs). One has to distinguish between the decorative and functional or technical features of the registration, without which your mark could be under threat for invalidity. After a lengthy battle in the EUIPO, spanning nearly 20 years, a case dealing with the same subject matter has faced its ultimate decision in the CJEU.

The case of Yoshida Metal Industry Co. Ltd v EUIPO dealt with the registration of a trademarks for the design of a knife handle by Yoshida (marks 1371244 and 1372580), which comprised of a metal handle with black dots in the handle (signifying circular indents in the metal). The marks were ultimately registered by the EUIPO; however, the decision was challenged by Pi-Design AG and Bodum. Having lost at the Board of Appeal and the General Court, Yoshida finally appealed to the CJEU.

Yoshida's arguments hinged only on the infringement of Articles 7(1)(e)(ii) and 51(3) of the Community Trade Mark Regulation.

Under Article 7(1)(e)(ii), a trademark cannot be registered if "signs which consist exclusively of… the shape of goods which is necessary to obtain a technical result". Case law, particularly in the LEGO decision, has noted that a shape cannot be rejected solely on the ground that it has functional characteristics. The dots used in the handles were, according to Yoshida, a hybrid mark, having both aesthetic and functional characteristics, therefore remaining registrable under Article 7.

The CJEU considered that, in adopting the wording used in Article 7 above, the exclusion of marks solely on their technical result or nature would be contrary to the law's intention, and clearly intends for marks that only incorporate the technical result and no aesthetic component to be unregistrable. Similarly, the introduction of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, won't alter the conclusion that the sign would only achieve a technical result. Even so, a mark can still be registered if the sign incorporates major non-technical elements that play an important role in the shape of the sign.

Some sharp wit

The Court determined that "...the fact that the sign concerned has ornamental and fanciful aspects does not preclude the ground for refusal under Article 7(1)(e)(ii)... from applying, in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function". In short, even if the sign has ornamental aspects along with the major technical features, it can still be rejected. This follows the decision by the General Court, who saw that Article 7(1)(e)(ii) applies where all the essential characteristics of the sign perform a technical function. The CJEU therefore rejected Yoshida's appeal under Article 7.

The second argument on appeal was under Article 51(3), which excludes particular goods and services applied for only if the invalidity grounds apply to those goods and/or services exclusively. Yoshida argued that the General Court had failed to consider Article 7 as above for all of the goods and services in question (particularly in relation to those that lacked handles, i.e. whetstones, and kitchen utensils and containers).

The Court swiftly despatched this argument, as Yoshida had neglected to bring the argument forward earlier during the proceedings, particularly at the stage when the consideration over the relevant goods were made. They had only limited themselves to the above argument under Article 7, ignoring Article 51 entirely. The CJEU therefore rejected the second argument simply for a lack of raising it at the General Court, barring them from arguing it at the CJEU.

The case brought up a very interesting argument, albeit a flawed one when looking at the wording of the Regulation. The CJEU's decision make sense, since, if Yoshida's argument were allowed, the introduction of any non-technical features to a sign could then avoid the limitation of registering those types of features. As long as the important parts of the sign registered for are the ones that create the technical feature, the mark should not be registered. This writer is sure that both Yoshida and Bodum are happy the case is over, even if the decision didn't swing their way.