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Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd
Factual and Procedural Background
This appeal concerns the validity of an EU trade mark registered in respect of inhalers, specifically whether it is invalid for lack of clarity and precision contrary to Article 4 of Council Regulation (EC) 207/2009 on the EU trade mark (the "EUTMR"). The trade mark comprises the colours dark purple and light purple applied to an inhaler, with a pictorial representation and a verbal description specifying the colours and their arrangement in general terms.
The trade mark is owned by the second claimant and the first claimant (collectively "Company A"), part of a well-known pharmaceutical group headquartered in Brentford in Middlesex. Company A has sold a successful asthma treatment product under the brand name Seretide in the UK, available in two inhaler forms: a dry powder inhaler and a metered dose inhaler.
On 7 December 2015, Company A issued proceedings against the defendant ("Company B") alleging infringement of the trade mark by Company B’s generic product. Company B counterclaimed that the trade mark was invalid because it covered multiple forms and was not graphically representable as required by Article 4 EUTMR.
Company B applied for summary judgment on invalidity, which was granted by HH Judge Hacon on 28 June 2016. The judge held the trade mark invalid for lack of sufficient precision, uniformity, clarity, and unambiguity under Article 4 EUTMR and refused permission to appeal. Company A was granted permission to appeal by Floyd LJ on 11 November 2016.
Legal Issues Presented
- Whether the trade mark is invalid under Article 4 of the EUTMR for failing to be clear, precise, and unambiguous in its graphical representation and description.
- The proper interpretation of the interaction between the pictorial representation and the verbal description of a trade mark consisting exclusively of one or more colours.
- Whether summary judgment was appropriate given the issues raised regarding the clarity and precision of the trade mark’s representation.
- Whether a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling was required on the interpretation of Article 4 EUTMR.
Arguments of the Parties
Appellant's Arguments
- The judge erred in interpreting the trade mark as having multiple possible meanings; it should be understood as comprising the dark and light purple colours in the specific proportions and arrangement shown in the pictorial representation.
- The verbal description merely specifies the colours and does not broaden or render uncertain the scope of the mark beyond the pictorial representation.
- The judge incorrectly elevated the verbal description above the pictorial representation, contrary to the Rules and Guidelines, which prioritize the pictorial representation.
- The judge confused the issue of clarity and precision of the trade mark’s representation with the broader issue of infringement scope.
- The judge wrongly relied on submissions made by Company A in other jurisdictions and EUIPO proceedings instead of independently interpreting the trade mark.
- The case was not suitable for summary judgment and should have proceeded to trial, or alternatively, a reference to the CJEU should have been made due to the unsettled nature of the law.
- The issue of the role of the verbal description in colour per se marks is currently pending before the General Court in a related case, which supports withholding summary judgment.
Respondent's Arguments
- The judge reached the correct conclusion that the trade mark is invalid for lack of clarity, precision, and uniformity as required by Article 4 EUTMR.
- The trade mark’s pictorial representation and verbal description together create uncertainty as to the protected sign’s precise nature.
- The judge correctly identified that the trade mark could be interpreted in multiple ways, none of which satisfy the legal requirements for graphical representation.
- The judge was correct to refuse a preliminary reference to the CJEU as the law is acte clair and well established by prior decisions.
- Summary judgment was appropriate because no further evidence or disclosure would affect the outcome.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793 | Requirements for graphical representation of colour marks: must be clear, precise, self-contained, easily accessible, intelligible, durable and objective; combination of colour sample and verbal description with internationally recognized colour code may suffice. | Used to establish that a colour per se mark requires precise graphical representation including verbal description and colour codes to satisfy Article 4 EUTMR. |
| Heidelberger Bauchemie GmbH (C-49/02) [2004] ECR I-6129 | Colour combinations must be systematically arranged in a predetermined and uniform way; mere juxtaposition or vague descriptions fail precision and uniformity requirements. | Applied to reject registrations covering colours in every conceivable form without precise arrangement, reinforcing the need for clarity and uniformity. |
| Dyson v Registrar of Trade Marks (C-321/03) [2007] ECR I-687 | Trade mark subject matter must be specific and not encompass all conceivable forms; otherwise, it is not a "sign" capable of trade mark protection. | Confirmed that marks covering broad, non-specific subject matter lack distinctiveness and precision, supporting invalidity of overly broad marks. |
| Sieckmann v Deutsches Patent-und Markenamt (C-273/00) [2003] Ch 487 | Graphical representation must be clear, precise, self-contained, durable, intelligible and objective. | Referenced to support the standards for graphical representation of trade marks, particularly for non-traditional marks such as colours. |
| Société des Produits Nestlé SA v Cadbury UK Ltd [2014] RPC 7 | Clarification of conditions for graphical representation and specificity of colour marks; marks must not cover a multitude of different appearances. | Applied to emphasize the need for clarity and precision in colour per se marks and to reject marks that allow multiple permutations without clear boundaries. |
| Seven Towns Ltd v OHIM (T-293/10) [2012] | Trade mark representation must not require excessive intellectual effort to understand; must be precise and accessible. | Used to illustrate the inadequacy of ambiguous or contradictory descriptions and representations that confuse the public. |
| Red Bull GmbH v Optimum Mark Sp. z.o.o (R 2037/2013-1) [2014] | The description forms an integral part of the graphical representation and is necessary to define the scope of protection; vague descriptions allowing multiple arrangements fail precision requirements. | Applied to confirm that both pictorial representation and description must be read together, and vague descriptions undermine clarity and uniformity. |
Court's Reasoning and Analysis
The court began by examining the legal framework governing EU trade marks, particularly the requirements of Article 4 EUTMR and related rules. It emphasized that a trade mark must be represented graphically in a clear, precise, and unambiguous manner so that the public and authorities can identify the subject matter of protection reliably.
The court analyzed the trade mark’s components: the INID code indicating it consists exclusively of colours, the pictorial representation showing a specific inhaler with dark and light purple colours in a particular arrangement, and the verbal description specifying the colours applied to "a significant proportion" and "the remainder" of an inhaler.
Three possible interpretations of the trade mark were identified: (1) the sign is the precise arrangement of colours shown in the pictorial representation; (2) the sign consists of the colours applied in any arrangement meeting the verbal description; (3) the sign comprises abstracted patterns of the colours as asserted by Company A in other proceedings.
The court found that each interpretation presented difficulties. The first conflicted with the INID code's implication that the mark is not limited to one shape and was not consistent with the verbal description. The second and third interpretations allowed for multiple different arrangements and patterns, failing the precision and uniformity requirements.
The court noted the importance of considering the pictorial representation and verbal description together as a whole graphical representation. It rejected the appellant’s submission that the pictorial representation should be paramount and the description secondary, finding no support in the EUTMR, rules, or CJEU case law for such a hierarchy.
Previous CJEU and General Court decisions were applied to confirm that marks covering a multitude of forms or lacking clear and uniform graphical representation fail Article 4 EUTMR. The court also rejected reliance on submissions made by Company A in other jurisdictions or EUIPO proceedings for defining the trade mark’s scope.
The court concluded that the trade mark lacks the clarity, intelligibility, precision, specificity, and uniformity required by law and would not be perceived unambiguously and uniformly by the public. This uncertainty grants an unfair competitive advantage, contrary to the purpose of trade mark law.
The court further held that the law was acte clair and no preliminary reference to the CJEU was necessary. Summary judgment was appropriate as no further evidence would alter the outcome.
Holding and Implications
The appeal is dismissed.
The court upheld the decision that the EU trade mark is invalid for failing to satisfy the clarity, precision, and uniformity requirements of Article 4 EUTMR. The trade mark’s graphical representation, comprising both the pictorial representation and verbal description, does not define a clear and precise subject matter. Consequently, the trade mark cannot serve its function as an indication of origin and grants an unfair competitive advantage.
The direct effect of this decision is that the trade mark is declared invalid and the infringement claim based upon it is dismissed. No new precedent is established beyond the application and affirmation of existing principles from CJEU and General Court case law.
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