Date: 21 May 2018
If you are an asthma sufferer, you may be familiar with Glaxo’s Seretide® Accuhaler® product.
Seretide® is a combination of two active ingredients which act in different ways to make it easier to breathe: fluticasone (an anti-inflammatory steroid medicine that reduces inflammation and mucus secretion in the lungs) and salmeterol (a long-acting bronchodilator that relaxes the muscles in the lungs).
Seretide® is sold by Glaxo in the UK in two product forms: a disc inhaler sold under the brand name Seretide® Accuhaler® and a metered dose inhaler shaped like a boot, sold under the brand names Seretide® and Evolhaler®.
Both products employ two shades of the colour purple, the darker shade of purple being the more prominent. In 2004, Glaxo filed a EUTM application to protect the two shades of light and dark purple that it uses on its Seretide® inhalers. The mark was granted in 2008 (as EUTM 3890126) and included a pictorial representation of the disc inhaler (as shown below) accompanied by a description which read:
"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."
The certificate of registration designated the mark with INID code 558, which covered marks consisting exclusively of one or more colours.
In December 2015 Glaxo issued proceedings against Sandoz claiming, amongst other things, that it infringed its trade mark by selling a generic version of Seretide® called AirFluSal® Forspiro®, shown below:
Sandoz counter-claimed that Glaxo's mark was invalid because it covered a multitude of different forms and so was not capable of being represented graphically as required by Article 4 EUTMR. It applied for summary judgment which was granted by HHJ Hacon. The judge declared the mark invalid on the ground that it did not satisfy Article 4 because it was not sufficiently precise and uniform; nor was it sufficiently clear and unambiguous. The judge found that while the written description was unambiguous as to the shade of the dark and light purple colours, it was cast in very general terms as to the arrangement of those colours and there was therefore a discrepancy between the pictorial representation and that description. In the judge's view, anyone looking at the register would try to understand precisely what the mark consisted of but would be presented with "a puzzle" as to whether the form of the mark was (i) that in the pictorial representation, (ii) in any arrangement of colours meeting the written description or (iii) a mark having a pattern of dark and light purple colouring taking the form of any one of a number of abstractions which Glaxo had argued in proceedings in other jurisdictions and before the EUIPO to constitute the mark.
On appeal, Glaxo contended that the judge had failed properly to interpret the mark and that, had he done so, he would or ought to have found that it had 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.
Kitchin LJ began with Article 4 of the EUTMR, which provides that an EU trade mark may consist of any sign "capable of being represented graphically" and which is capable of distinguishing the goods or services of one undertaking from those of another. In order to fulfil its function, the graphical representation must be such that the authorities and the public, including actual and potential competitors, can identify the sign clearly and precisely.
Further, Kitchin LJ explained, the graphical representation encompasses not just the pictorial representation of a sign but also any description which accompanies it. The mere juxtaposition of two colours, without shape or contours, or a reference to two or more colours "in every conceivable form" does not meet the requirements of precision and uniformity.
In Kitchin LJ's view, the judge correctly held that the designation of Glaxo's mark with INID code 558 meant that it was and would be understood to be a mark which consisted exclusively of one or more colours. It was, in short, a colour per se mark. It was not a two dimensional figurative mark having the appearance of the pictorial representation; nor was it a three-dimensional mark having a particular shape and coloured in a particular way. Further, anyone inspecting the register would understand that, as a colour per se mark, registered in respect of inhalers, it was at least implied
that it was not limited to the colours as applied to that particular shape of inhaler depicted in the registration.
Against this background, Kitchin LJ said, the issue for the public inspecting the register was how the mark would be understood. In Kitchin LJ's view the judge was right to describe this as "a puzzle".
Taking Glaxo's interpretation that the sign of which the mark consisted was the precise arrangement of the dark and light purple colours shown in the pictorial representation, "spikes and all", Kitchin LJ identified two major difficulties.
First, while INID code 558 implied that the sign was not limited to the colours applied to any particular shape of inhaler, it was difficult to understand how this particular arrangement of colours, including its spiky perimeter, could be applied to an inhaler with a different shape. The judge was entitled to consider this problem by reference to Glaxo's boot shape inhaler. In Kitchin LJ's judgment, it was impossible to say with any degree of certainty how the mark could be applied to that shape and any attempt to do so would be likely to produce a result which created a visual impression which was very different to that created by the pictorial representation. Secondly, this interpretation was not consistent with the verbal description which was put in more general terms.
Stepping back, Kitchin LJ said that the public, including economic operators, looking at the certificate of the trade mark on the register, would be left in a position of complete uncertainty as to what the sign actually was. They would be left "scratching their heads".
In Kitchin LJ's judgment, the mark lacked the clarity, intelligibility, precision, specificity and accessibility that the law demands. Moreover, he had no doubt that it would not be perceived unambiguously and uniformly by the public. It also offended against the principle of fairness because the uncertainty as to what the subject matter of the mark actually was gave Glaxo an unfair competitive advantage. These deficiencies in the trade mark were compounded by the range of alternatives that the other possible interpretations encompassed, i.e. the "abstractions" interpretation and the interpretation that any proportions of the dark and light purple colours falling within the terms of the verbal description constituted the mark. Each of these allowed for numerous different combinations of the dark and light purple colours and as such neither of them exhibited the qualities of precision and uniformity required by Article 4.
Finally, Kitchin LJ was satisfied that the case was suitable for summary judgment as neither side had suggested that their case was likely to be affected, still less improved, by any further disclosure or evidence.
In theory, colour marks are registrable, but merely providing a sample of the colour is not enough. It must be accompanied by a description. A description drawn in general terms, however, invites ambiguity, as Cadbury found to its cost when it tried to describe how it would use the colour purple in practice, i.e. as the "predominant" colour.
Similarly, a description that does not match the visual representation will also render ambiguous the graphical representation, comprising the visual and the verbal and considered as a whole.
Glaxo's registration sought to mask the lack of precision (which served Glaxo's purpose of trade marking a combination of two shades of purple per se) with an otherwise precise pictorial representation. The result was a lack of clarity not least because of the discrepancy between that representation and the written description. While ultimately the Court of Appeal's decision in this latest case provides another example of how not to register a colour mark, tactically how to approach such applications in order to give maximum protection to corporate colours remains a puzzle which leaves brand owners and their advisers "scratching their heads".