For those who have been following the Cadbury purple saga (see relevant court decision here), Glaxo v Sandoz is a case which involved another shade of purple. Sandoz (the defendant) made an application for summary judgement in its counterclaim for a declaration that Glaxo’s EUTM No. 3890126 was invalid as part of the infringement proceedings brought by Glaxo. By extension, Sandoz also seeks summary judgement dismissing Glaxo’s claim for the infringement of its EUTM.

EUTM No. 3890126 consisted of a visual representation of what appeared to be a picture of a roundish inhaler accompanied by the description: “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 addition, the mark has been designated with an INID code 558, which is a code that identifies the elements of the mark as “consisting exclusively of one or several colors”. 

The ground of invalidity relied on by Sandoz is that the EUTM does not confirm with Article 4 of the EUTMR, i.e. that the EUTM is neither a sign nor capable of being represented graphically, within the meaning of Article 4. Interestingly, Sandoz brought these proceedings in the UK courts, presumably because the courts here have a history of upholding challenges on this basis (see the Cadbury case linked above).

The public policy reason behind the need for a “graphical representation” is that relevant parties, e.g. the trade mark registry, a competitor, need to be able to determine the precise subject of the protection afforded by the registered mark to its proprietor. As such, in order to fulfil its role as a registered trade mark, a sign must be perceived unambiguously and uniformly, so that the function of the mark as an indication of origin is guaranteed.

His Honour Judge Hacon in Glaxo v Sandoz helpfully summaries the case law relevant to the issue of Article 4 EUTMR.  Turning to the case at hand, because of the indication of a 558 code in this trade mark, he notes that the registration at issue is for a colour mark which may not be confined to any specific shape. The reader must then turn to the description accompanying this mark, but this is not helpful because it is not precise (e.g. what shape the “inhaler” should take) and makes no reference to the visual representation provided.

As such, he states that the mark (both the visual representation and the accompanying description) is not clear with regard, firstly, to the relative proportions of light and dark purple and how they are presented (stars, stripes, dots etc.), and secondly, to the form the mark should take. He concludes that EUTM No. 3890126 is not sufficiently precise, uniform, clear and unambiguous to qualify for registration and should, therefore, be declared invalid. Consequently, the infringement action must also fall away.

Perhaps less would have been more in this case:  Glaxo could have considered filing for the mark without a description. Whilst this might have left the mark open to a possible shape-mark objection, it would have eliminated the issue regarding Article 4 EUTMR.

For anyone interested in seeking trade mark registration for a colour, a shape, a coloured shape, or just want to discuss the above, please feel free to get in touch.