Date: 1 June 2017
By Angela Fox and Dr. Janet Strath
The Court of Appeal's decision in 2014 on the registrability of Cadbury's colour purple as a trade mark, in which Maucher Jenkins acted for Société des Produits Nestlé SA, has recently been applied by the Court of Appeal to another colour mark case, in Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd  EWCA Civ 335 (10 May 2017).
Glaxo Wellcome UK Ltd and Glaxo Group Ltd ("Glaxo") asserted that Sandoz had infringed its colour trade mark by selling an asthma inhaler called "AirFluSal", a generic version of Glaxo's very successful "Seretide" product. In a ruling dated 15 June 2016, HH Judge Hacon declared Glaxo's trade mark invalid, on the basis that it contravened Article 4 of Council Directive (EC) No 207/2009, because it lacked clarity, intelligibility, precision, specificity and accessibility, and would not be perceived unambiguously and uniformly by the public. Glaxo appealed, contending that the judge had failed properly to interpret its trade mark and that, had he done so, he would have found that it has only one possible meaning, namely that it comprised the dark and light purple colours in the specific proportions and arrangement shown in the pictorial representation of the mark on the certificate, as shown below:
The accompanying text explained that:
"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."
In a ruling dated 10 March 2017, Glaxo's appeal was dismissed. Giving the lead judgment, Lord Justice Kitchin found the verbal description was fatally flawed, and the fact that Glaxo's registration included an image of the product could not save it. The description meant that the mark was capable of encompassing a myriad of possible combinations and proportions, and therefore lacked the requisite clarity, intelligibility and precision required for registration.
This decision highlights that the verbal description for a colour or colour combination mark is key. An inadequate verbal description cannot be saved by simply adding an image of the product to the application. A product image can be used, but this is typically helpful only where the verbal description indicates how the colour or colours are to be applied to other goods of the same kind.
In the present case, Glaxo referred to a series of applications to support an argument that, around the time the trade mark application was filed, it was fairly common practice to use an image of the goods to illustrate how the relevant colour or colours would be applied; for example, one of the applications which received attention during the course of the hearing is shown below:
The colour green applied to the hood of an agricultural tractor or model agricultural tractor, tothe rear wheel mudguards and to the cabin pillars, a silver strip applied to the hood, the colour white applied to the operator's cab roof, and the colour red applied to the wheel centers. Colour: A combination of green, red, silver and white.
|Agricultural tractors, model agricultural tract|
However, as Kitchin LJ said (at paragraph 69):
"The verbal description of such a mark is also important and must be taken into account together with the pictorial representation. The graphical representation, comprising both the pictorial representation and the verbal description, must be considered as a whole."
In reaching his decision, Kitchin LJ extensively quoted from and relied upon Société des Produits Nestlé SA v Cadbury UK Ltd  RPC 7, in which Maucher Jenkins represented the successful appellants, Nestlé. Reference was also made to Case R 2037/2013-1 Red Bull GmbH v Optimum Mark Sp. z.o.o. concerning the colour combination of blue and silver in a rectangular form (in an approximately 50% - 50% proportion), which is still pending appeal before the General Court. However, as Kitchin LJ noted, the issues in that case are slightly different and therefore did not affect the court's decision.
The full decision can be read here: http://www.bailii.org/ew/cases/EWCA/Civ/2017/335.html
For questions about this matter or related issues, please contact our Partner Angela Fox (firstname.lastname@example.org).
Thursday, June 1, 2017