Another purple patch for Trade Marks refused

Background

Glaxo was the proprietor of a European Union Trade Mark (“EUTM”) for two colours in respect of inhalers used in the treatment of asthma. The trade mark consists of dark purple (pantone 2587C) over the majority of the inhaler and a lighter shade of purple (pantone 2567C) of the remainder of the inhaler. There was also a graphical representation of an inhaler bearing the above colouration.

Glaxo sued Sandoz for infringement of its registered Community trade mark (CTM) and Sandoz counterclaimed for invalidity of the CTM. Sandoz was granted summary judgment on its claim for invalidity on the basis that the trade mark was not sufficiently precise and uniform, nor was it sufficiently clear and unambiguous and therefore could not be represented graphically as is required by Article 4 of the EU Trade Mark Regulation (EC 207/2009). Glaxo appealed to the Court of Appeal.

Decision

The Court of Appeal reviewed the current state of the law in relation to trade marks for a colour per se, reviewing UK and CJEU jurisprudence. Although there was a pictorial representation of the trade mark on an inhaler coloured dark and light purple the court stated that this did not add to the clarity or precision of the trade mark, indeed, when someone looked at the trade mark on the register they “would be left scratching their heads” as to what was actually the scope of the mark. The public would not be capable of perceiving the trade mark unambiguously and uniformly due the range of possibilities and alternatives encompassed by the trade mark.

This was a case where further evidence would not alter the position of the parties it was therefore suitable for summary judgment. Finally, the Court of Appeal refused to make a reference to the CJEU to clarify the law, as the relevant EU law was stated to be settled and clear.

Comment

This decision follows the decision of the Court of Appeal to refuse a trademark for the colour in relation to confectionary in Nestlé v Cadbury. It also highlights the difficulty in obtaining protection for a colour per se and in particular the challenge to precisely define the scope and representation of the mark graphically, without creating a figurative mark. The courts are also mindful that the granting of trademarks over colour may provide a means for trade mark holders to extend their monopoly beyond the bounds of what would normally be allowable and provide them with an unfairly competitive advantage. It should also be noted that Glaxo’s CTM was registered some years before the Cadbury decision.

However, given the scope of protection potentially afforded to mark holders by obtaining a registration for one or more colours as trade marks, there are likely to be further attempts to obtain protection for colour marks.

A link to the judgment is here.