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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Glaxo gets puffed out...

If you are an asthma sufferer, you may be familiar with Glaxo’s Seretide® Accuhaler® product.

Seretide®, which is a combination of an inhaled corticosteroid (fluticasone proprionate) and a long-acting bronchodilator (salmeterol xinafoate), is used in the treatment of chronic obstructive pulmonary disease (COPD). Seretide® is available for use both in the form of the Accuhaler® and as a metered dose inhaler. Both products employ two shades of the colour purple, the darker shade (of purple) predominating. In 2004, Glaxo filed an EU-wide (EUTM) trade mark application to protect the two shades of light and dark purple that it uses on its Seretide® inhalers. The mark was granted in 2008 (EU trade mark registration no. 3890126). The registered mark is set out below,

“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”.

As can be seen, the mark comprises a visual representation of the two purple colours, as applied to the circular Accuhaler® inhaler, and is accompanied by a written description. The mark does not appear to have been accepted based on evidence of acquired distinctiveness through use. It was deemed inherently registrable by the EUIPO.

When Glaxo’s competitor, Sandoz launched its own purple coloured inhaler named AirFluSal® Forspiro® which was also designed to deliver a fluticasone/ salmeterol combination aimed at the treatment of COPD, Glaxo sued them for inter alia trade mark infringement based on their above mentioned purple colour combination registration. Sandoz’s AirFluSal® Forspiro® inhaler product is shown below.

​​​​​​Sandoz counter-claimed that Glaxo’s colour combination registration was invalid under Article 52 of EU Council Regulation No. 207/2009 in that the mark was neither a sign nor capable of being represented graphically (Article 4 of the Regulation).

As an aside, this dispute was part of wider litigation. However, for the purposes of this article, we will only concentrate on the High Court’s decision assessing the validity of Glaxo’s colour registration (Glaxo Wellcome UK Limited (t/a Allen & Hanburys) & Glaxo Group Limited v Sandoz Limited (HC-2015-005005).


THE ARGUMENTS

Sandoz’s main argument for invalidation of Glaxo’s EUTM 3890126 was that, by virtue of the written description, Glaxo’s mark was not a single sign but a collection of an almost limitless number of signs, echoing the judgment of Sir John Mummery (LJ) in the 2013 English Court of Appeal case, Société des Produits Nestlé S.A. v Cadbury UK Limited [2013] EWCA Civ 1174 (“Cadbury Colour Purple”) (Maucher Jenkins successfully represented Nestlé in that case).

In the Cadbury Colour Purple case, the Court of Appeal refused Cadbury’s UK trade mark application to register a swatch of purple (Pantone 2685C) with the following written description,

“The colour purple (Pantone 2685C), as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.

because it contained an unknown number of signs due to the reference to “predominant” (in the written description) and therefore lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration.

In the present case, Glaxo argued, in their defence against the invalidation action, that the correct starting point for assessing the scope of their colour combination mark was the visual representation rather than the written description and that the single sign being claimed was an “abstraction” of the visual representation. In the alternative, to the extent the colour combination mark might encompass more than one sign, the variants within the registration formed a narrow group that were permitted.

THE DECISION

Judge Hacon was not persuaded by Glaxo’s arguments and held their EUTM registration (no. 3890126) to be invalid because it lacked clarity, precision and uniformity. Whilst a single sign could potentially include variant forms these must be “very minor”, “insignificant” and “go unnoticed” by the average consumer.

In this case, the visual representation and written description were incongruent and presented the average consumer with a “puzzle” as to the form of the mark; the description was not qualified and narrowed to a single sign as depicted in the visual representation. Whilst the visual representation by itself could be a single sign (albeit, the Judge thought, more suited to protecting the 3D shape of the inhaler rather than its colour), the written description could not.

Judge Hacon also held that both the visual representation and the written description should be considered and one element shouldn’t be given more weight than the other; it depends on the circumstances of each case. Further, it was for the Court to decide this question, without reference to the average consumer.

Perhaps not surprisingly, Glaxo are currently seeking permission from the Court of Appeal to appeal this decision. We expect the permission application to be decided by the end of the year.

Comment

In our view, Judge Hacon has reached the right decision in this case; the written description Glaxo have used is, in our opinion, imprecise and potentially covers an infinite number of signs, only one of which is illustrated visually.

This case also demonstrates the considerable difficulties associated with validly registering a colour or combination of colours in the EU, when that colour or combination of colours is not used in a uniform manner on the goods.

Further, it highlights the pitfalls of filing an application for a colour (or a colour combination) mark which includes a detailed, written description that could create uncertainty as to the scope of monopoly sought.

All is not lost for Glaxo however since it also owns UK trade mark registrations for the colour marks shown below that were filed between 2003 and 2007. These registrations all include arguably more precise written descriptions than the invalid EU trade mark registration, although it is somewhat surprising that they were allowed by the UKIPO without proof of acquired distinctiveness through use. This may yet leave the registrations vulnerable to cancellation:

UK REGISTRATION NO. 2353195A

The trade mark consists of the colours dark purple (Pantone code 2587C) and light purple (Pantone code 2567C) applied to the surface of an inhaler, as illustrated in the representation attached to the form of application.

UK REGISTRATION NO. 2353195C

The trade mark consists of the colours dark purple (Pantone code 2587C) and light purple (Pantone code 2567C) applied to the goods, as illustrated in the representation attached to the form of application.

UK REGISTRATION NO. 2353195D

The trade mark consists of the colours dark purple (Pantone code 2587C) and light purple (Pantone code 2567C) applied to the outer casing of the goods, dark purple being the predominant colour and light purple being applied to the remainder of the goods, the arrangement and proportions of the colours shown in the representation attached to the form of application.

UK REGISTRATION NO. 2353195E

The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of the goods, and the colour light purple (Pantone code 2567C) applied to the remainder of the goods, the colours being applied respectively to opposite ends of the goods, as illustrated in the representation attached to the form of application.

During their litigation with Sandoz, Glaxo also applied to register a “Libertel” style colour mark as a UK trade mark (application no. 3108001) and an EUTM (application no. 14596951) comprising a swatch of purple colour plus a written description that just identifies Pantone 2587C.

Both applications were accepted prima facie (which again, is a surprise) but are under opposition; the UK application having been opposed by Sandoz and the EUTM application by Sandoz’s parent company Novartis (along with a German company, Minerva).

It will be interesting to see whether the English Court is given an opportunity, in Sandoz’s opposition to Glaxo’s UK application no. 3108001 for the single colour mark (Pantone 2587C) to address Lloyd (LJ’s) obiter comments at paragraphs [58]-[62] in the Court of Appeal’s Cadbury Colour Purple decision where he cast doubt on the validity of a Libertel style mark that consists of just a swatch of colour plus a Pantone code.

Lloyd LJ commented as follows:

58. It seems to me that some of the reasoning of the Hearing Officer and of the judge proceeds on a false basis as to the effect of the CJEU’s decision in Libertel. The judge described that case as deciding that “pure colour marks are in principle capable of being registered”: see the judgment at paragraph 47. In one sense that is correct, but I believe it can be, and has been, taken as going further than it should. The application for registration under consideration in that case showed coloured orange the space which was designated for the representati on of the sign, and the section in which the colour of the mark was recorded was completed with the word “orange”: see the Advocate General’s Opinion, paragraph 22, and the court’s judgment, paragraph 15. That manner of proceeding was held to be inadequate because the specification of the precise colour depended entirely on the colouring of the registration application. This might change over time through fading and, even if it did not, it would not be identifiable with any kind of precision except by reference to the original application form. A process of reproduction might alter the exact colour. For that reason, the use of a reference point such as a Pantone shade was held to be necessary, the colouring on the original registration application being insufficiently accessible or durable, and the word orange being far from sufficiently precise. (Emphasis added).

59. The Court held at paragraph 68 that: “The reply to the first question referred must therefore be that a colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of the Directive, provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code.”

60. This evidently allows for the possibility that a sign consisting of a colour as such may have an acquired distinctive character, but the decision is that, in order to qualify for registration, even if it has become distinctive, it must satisfy the tests of being clear, precise, selfcontained, easily accessible, intelligible, durable and objective, and that to reproduce the colour on paper is not enough, whereas reference to a suitable code may be.

61. That seems to me to be a decision that registration of a colour mark is not possible unless these tests are satisfied. It is not a decision that, if those tests are satisfied, then registration is possible. What more is needed for a sign which satisfies all of those tests to be registrable was not the subject of argument before the court. (Emphasis added).

62. As this case shows, there are considerable potential problems in seeking to show that a pure colour mark is properly registrable. The tests referred to in paragraph 68 of the Libertel judgment are aimed, among other things, at ensuring that both registration authorities and actual or potential competitors know the scope of the mark which is applied for or has been registered. Such persons must be able to tell not only whether a given mark is within the scope of the registration applied for or effected, but also whether it is not within that scope.

Glaxo therefore still face challenges trying to protect and enforce its inhaler colours and we look forward to seeing how this plays out both in the UK and, more widely, in the EU.