Are colour marks more susceptible to revocation?
This was a dilemma faced by Glaxo in its case against Sandoz Ltd (Glaxo V Sandoz Ltd (No. 2) (2017).
Glaxo is a leading British pharmaceutical company worth billions. For many years Glaxo have successfully made and sold throughout the world products for the treatment of asthma and chronic pulmonary disease.
The appeal concerned Glaxo’s EU registered trade mark in respect of inhalers (“Trade Mark”). The certificate of registration contained a pictorial representation of the mark with a description which read:
“The trade mark consist 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.”
Glaxo issued proceedings against Sandoz in December 2015, alleging that Sandoz had infringed its trade mark by selling a generic version of its inhaler. Sandoz successfully challenged the validity of the Trade Mark. It argued that the Trade Mark was invalid because it covered a multitude of different forms and was incapable of being represented graphically as required pursuant to Article 4 of Council Regulation (EC) 207/2009.
Glaxo appealed on the grounds that:
- the Judge had failed to properly interpret the Trade Mark. Had he done so, he would have found that the Trade Mark had one possible meaning. That is the Trade Mark was to be represented in the light and dark shades of purple in the specific proportions as demonstrated in the pictorial representation of the mark; and
- the accompanying wording of the Trade Mark did not broaden its scope or render it invalid.
Pursuant to Article 4 an EU trade mark must:
- consist of a sign;
- be capable of being represented graphically; and
- be capable of distinguishing the goods and services of one undertaking from those of other undertakings.
A further requirement as interpreted by the Court of Justice of the European Union (in cases considered below) is that registration should be precluded and/or a trade mark is susceptible to revocation if the mark is not capable of being represented in a manner which enables the authorities and the public to determine the clear and precise level of protection provided to the registered proprietor. This has now been implemented in changes made to Article 4 which will apply from 1st October 2017.
In Glaxo, the COA considered the earlier judgements of Libertel, Sieckmann, Heidelberger, Cadbury, Red Bull and Seven Towns which dealt with the registrability of trade marks containing colours.
In Libertel, the filing of a single colour could not constitute a graphic representation within the meaning of Article 4. However, if filed with a verbal description of the colour, the mark could constitute a graphic representation, provided that it was clear, precise, accessible, and intelligible.
Similarly, in Heidelberger the samples of two colours with a verbal description could constitute a graphic representation provided that the application for registration included a systematic arrangement of the colours in a predetermined and uniform way. Further, the function of graphic representation must define the sign, so that the protection sought could be clearly and precisely identified by the competent authorities and public.
The Outcome of the Appeal
Consequently, the appeal was dismissed for the following reasons:
- The Trade Mark was understood to be a colour per se mark. On looking at the pictorial representation it was not clear as to how the mark would be applied to an inhaler.
- The verbal description created further uncertainty. It stated that the mark consisted of the dark purple colour applied to a ‘significant proportion’ and the light colour ‘applied to the remainder’.
- The arrangement of the colours was not the same in each abstraction provided by Glaxo and therefore the abstractions were not representations of the same sign.
- If the Trade Mark consisted of any proportions of the dark and light shades of purple falling within the verbal description, and that the pictorial representation of the Trade Mark was merely an illustration of one form that the mark could take, such a mark would in any event leave the relevant authorities and public confused as to what the protected sign actually was.
- The Trade Mark lacked clarity and precision.
A registered trade mark provides the registered proprietor the exclusive rights to the use of the mark for the classes of goods and services for which it is registered. It is therefore not surprising that companies are prepared to exhaust time and expense in protecting their rights and take action against those who infringe its rights.
However, as the case of Glaxo demonstrates, colour marks are particularly susceptible to revocation. The decision and the changes made to Article 4 is also likely to result in more applications of registration being refused as well. Consequently, the difficulty lies in the wording used when registering a colour mark. If the description of a mark is drafted too wide, so as to afford the proprietor as much protection as possible. There is a risk that the trade mark could be revoked for being uncertain and ambiguous. However, if the description is too narrow in scope, the level of protection afforded is limited and consequently does it preclude the purpose and incentive behind registration.