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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd [2017] EWCA Civ 335 (10 May 2017) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2017/335.html Cite as: [2017] EWCA Civ 335 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (INTELLECTUAL PROPERTY)
HIS HONOUR JUDGE HACON
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE KITCHIN
and
LORD JUSTICE FLOYD
____________________
(1) Glaxo Wellcome UK Ltd (t/a Allen & Hanburys)(2) Glaxo Group Ltd |
Claimants/ Appellants |
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| - and - |
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Sandoz Ltd |
Defendant/Respondent |
____________________
for the Appellants
Martin Howe QC and Iona Berkeley (instructed by White & Case LLP)
for the Respondent
Hearing date: 9 March 2017
____________________
Crown Copyright ©
Lord Justice Kitchin:
Introduction

"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."
Glaxo")
are part of the well-known
GlaxoSmithKline
group of companies ("GSK") which have their headquarters in Brentford in Middlesex.
Glaxo
under the brand name Seretide and it has achieved sales with a value in excess of £4.3 billion.
Glaxo
in the UK in two product forms. One is a dry powder or disc inhaler which is sold under the brand names Seretide and Accuhaler. This has the same appearance as the pictorial representation of the Trade Mark save that it also bears a largely white circular sticker in the centre of the disc bearing the words 'Seretide' and 'Accuhaler' and various product details. The other is a metered dose inhaler which has a 'boot shape' and is sold under the brand names Seretide and Evohaler. It looks like this:

Glaxo
issued these proceedings against the defendant ("
Sandoz")
asserting, inter alia, that it had infringed the Trade Mark by selling a generic version of Seretide called AirFluSal.
Glaxo's
complaint was directed at the appearance of AirFluSal which is shown below:

Sandoz
responded in its defence and counterclaim that the Trade Mark was invalid because it covered a multitude of different forms and so was not capable of being represented graphically as required by Article 4 of the EUTMR. It asserted that this was confirmed by the various allegations of infringement made by the second claimant in other jurisdictions and by the contentions advanced by the second claimant in ongoing proceedings in the EUIPO.
Sandoz
applied for summary judgment on its claim that the Trade Mark was invalid. That application came on for hearing on 15 June 2016 before HH Judge Hacon sitting as a judge of the High Court. On 28 June 2016 he acceded to the application and held and declared that the Trade Mark was indeed invalid. He considered that the Trade Mark did not satisfy Article 4 of the EUTMR because it was not sufficiently precise and uniform; nor was it sufficiently clear and unambiguous. He refused
Glaxo's
application for permission to appeal.
Glaxo
now appeal to this court with permission granted by Floyd LJ on the papers by order dated 11 November 2016. In broad outline, they contend that the judge failed properly to interpret the Trade Mark and that, had he done so, he would or ought to have found that it has only one possible meaning, namely that it comprises the dark and light purple colours in the specific proportions and arrangement shown in the pictorial representation of the mark on the certificate. Further,
Glaxo
continue, the wording on the certificate merely describes the mark in general terms and specifies the shades of the purple colours which it comprises. It does not broaden the scope of the mark or render it uncertain in any way.
The legal framework
"Signs of which an EU trade mark may consist
An EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
"Signs of which an EU trade mark may consist
An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register of European Union trade marks, ("the Register"), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."
"1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;"
"1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the EU trade mark has been registered contrary to the provisions of Article 7;"
"(1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script as for example, by typing the letters, numerals and signs in the application …… "
"(2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears…. Where it is not obvious, the correct position of the mark shall be indicated by adding the word 'top' to each reproduction …."
"(3) In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark."
"(5) Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added."
"28 Furthermore, as the court has held, a graphic representation within the meaning of article 2 of the Directive must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified: Sieckmann v Deutsches Patent-und Markenamt (Case C-273/00) [2003] Ch 487, 509, para 46.
29 In order to fulfil its function, the graphic representation within the meaning of article 2 of the Directive must be clear, precise, self-contained, easily accessible, intelligible, durable and objective: Sieckmann, paras 47-55.
30 In this case, the query referred to the court relates to an application to register a colour per se, represented by a sample of the colour on a flat surface, a description in words of the colour and/or an internationally recognised colour identification code.
31 A mere sample of a colour does not satisfy the requirements set out in paras 28 and 29 of this judgment.
32 In particular, a sample of a colour may deteriorate with time. There may be certain media on which it is possible to reproduce a colour in permanent form. However with other media, including paper, the exact shade of the colour cannot be protected from the effects of the passage of time. In those cases, the filing of a sample of a colour does not possess the durability required by article 2 of the Directive: see Sieckmann, para 53.
33 It follows that filing a sample of a colour does not per se constitute a graphic representation within the meaning of article 2 of the Directive.
34 On the other hand, a verbal description of a colour, in so far as it is composed of words which themselves are made up of letters, does constitute a graphic representation of the colour: see Sieckmann, p 511, para 70.
35 A description in words of the colour will not necessarily satisfy the conditions set out in paras 28 and 29 of this judgment in every instance. That is a question which must be evaluated in the light of the circumstances of each individual case.
36 A sample of a colour, combined with a description in words of that colour, may therefore constitute a graphic representation within the meaning of article 2 of the Directive, provided that the description is clear, precise, self-contained, easily accessible, intelligible, and objective.
37 For the same reasons as those set out at para 34 of this judgment, the designation of a colour using an internationally recognised identification code may be considered to constitute a graphic representation. Such codes are deemed to be precise and stable.
38 Where a sample of a colour, together with a description in words, does not satisfy the conditions laid down in article 2 of the Directive in order for it to constitute a graphic representation because, inter alia, it lacks precision or durability, that deficiency may, depending on the facts, be remedied by adding a colour designation from an internationally recognised identification code."
"68 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."
"The trade mark applied for consists of the applicant's corporate colours which are used in every conceivable form, in particular on packaging and labels.
The specification of the colours is:
RAL 5015/HKS 47 — blue
RAL 1016/HKS 3 — yellow."
"27 The function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.
28 The entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators.
29 On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks.
30 On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties.
31 In those circumstances, in order to fulfil its role as a registered trade mark, a sign must always be perceived unambiguously and uniformly, so that the function of the mark as an indication of origin is guaranteed. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must also be durable.
32 It follows from the above that a graphic representation for the purpose of Art.2 of the Directive must be, in particular, precise and durable."
"33 Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.
34 The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours "in every conceivable form", as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Art.2 of the Directive, as construed in paras [25] to [32] of this judgment.
35 Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.
36 As regards the manner in which each of the colours concerned is represented, it is clear from paras [33], [34], [37], [38] and [68] of Libertel that a sample of the colour concerned, accompanied by a designation using an internationally recognised identification code, may constitute a graphic representation for the purposes of Art.2 of the Directive."
"42 In light of the above, the answer to the questions must be that colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Art.2 of the Directive where:
— it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign; and
— the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way. …"
"38 Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Art.2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape. "
39 It follows that the subject matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a "sign" within the meaning of Art.2 of the Directive (see, to that effect, Libertel at [27]).
40 Accordingly, the answer to be given to the national court must be that Art.2 of the Directive is to be interpreted as meaning that the subject matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a "sign" within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof."
"The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods."
"15 Some general points relating to the requirements of art.2 of the directive, which are relevant to this case, can be picked out of the judgments:
The conditions
(1) An application to register a trade mark must satisfy three conditions for the purposes of Article 2:
(i) there must be a sign;
(ii) it must be capable of graphical representation;
(iii) it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Purpose
(2) The purpose of the requirements is to prevent abuse of trade mark law in order to obtain an unfair competitive advantage.
Identification
(3) Identification requirements for entry of a trade mark on the public register of trade marks include clarity, intelligibility, specificity, precision, accessibility, uniformity, self-containment and objectivity.
Multitude of forms
(4) The identification requirements are not satisfied, if the mark could take on a multitude of different appearances, which would create problems for registration of the mark and give an unfair competitive advantage over competitors.
Colour without a message
(5) Colours are normally a simple property of things, or a means of decorating things. They are not normally capable of being a sign. A sign conveys a message. The sign is capable of being registered as a trade mark, if the message is about the source of goods or services.
Colour as a sign conveying a message
(6) Depending on the facts and circumstances of the case, colours, or combinations of colours, designated in the abstract and without contours and used in relation to a product or service are capable of being "a sign."
Graphic representation of colour
(7) As for the second condition of graphical representation, in a mark consisting of two or more colours designated in the abstract and without contours, qualities of precision and uniformity are required. The colours must be arranged by associating them in a predetermined and uniform way.
Colour without form/in a multitude of forms
(8) Those requirements are not met by the mere juxtaposition of colours without shape or contours, or by reference to colours in every conceivable form, so that the consumer would not be able to recall or repeat with certainty the experience of a purchase. The scope of protection afforded by such a mark would be unknown both to the competent authorities responsible for maintaining the register and to economic competitors. Registration would confer unfair competitive advantages on the proprietor of the mark."
"51 In my judgment, that description, properly interpreted, does not constitute "a sign" that is "graphically represented" within art.2. If the colour purple is less than total, as would be the case if the colour is only "predominant", the application would cover other matter in combination with the colour, but not graphically represented or verbally described in the specific, certain, self-contained and precise manner required. The result would not be an application to register "a sign", in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances, which are neither graphically represented nor described with any certainty or precision, or at all.
52 The appearance and number of such other signs would be unknown both to the registrar, who is responsible for the proper functioning of the registration system and is faced with the decision whether or not to register it on a public register, and to competitors, who would not be able to tell from inspecting the register the full scope and extent of the registration. To allow a registration so lacking in specificity, clarity and precision of visual appearance would offend against the principle of certainty. It would also offend against the principle of fairness by giving a competitive advantage to Cadbury and by putting Nestlé and its other competitors at a disadvantage."
"63 Cadbury's formulation, with its use of the words "or being the predominant colour applied to the whole visible surface, of the packaging of the goods" seems to me to fall far short of satisfying these tests. What is meant by "predominant" in this context? Miss Himsworth's primary contention was that a colour was predominant, in this context, if it covered more than 50% of the surface area in question. If this is right, and if that is what was intended, then it might be possible to achieve certainty by spelling that out in the registration application. It could have read: "applied to the whole visible surface, or to more than 50% of the area of the visible surface, of the packaging of the goods". But it is not difficult to imagine other tests which might be applied to determine predominance in respect of colour. If the contrast is between two different colours, one which is stronger or more eye-catching, or is applied to a more prominent part of the packaging, might be seen as predominant even if it was applied to a smaller area than another colour (including white). The evidence for Cadbury … shows that Cadbury itself regarded other factors than the measured surface area as being relevant. In my judgment the use of the word "predominant" in this context, makes the description of the mark too subjective, too imprecise, and inadequately clear and intelligible, to be capable of registration."
"Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments."
"Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%."
"43 It also follows from the Libertel decision that a description of a sign may be required to fulfil the requirements of Article 4 CTMR, contrary to the CTM proprietor's argument that a description is not obligatory pursuant to Rule 3(3) CTMIR. In fact, a necessary description forms integral part of the sign's graphical representation and thus also serves to define its scope of protection. Whilst the sign's description indeed may not be used to broaden the scope of protection of what may be derived from the sign's graphical representation itself ('what you see is what you get'), it may therefore be indispensable to be taken into account when defining the sign's subject matter."
"48. In the present case, the application for the signspecifies that '[p]rotection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%'. As follows from above, the graphical representation and description must be evaluated in combination in order to define the sign's scope of protection. Apart from indicating two colours, the sign's description is confined to indicating a certain ratio of them. Evidently, the mere indication of such a ratio allows for the arrangement of the two colours in numerous different combinations, thus not in in a predetermined and uniform way. Depending on the arrangement of colours on different parts of 'energy drinks' or other objects related thereto, the overall impression of two colours arranged in numerous manners may be very distinct. The cancellation applicant has given various examples of possible arrangements which would fit the sign's description. The average consumer could thus not repeat with certainty the experience of a purchase. This applies in particular for the category of marks at hand since colours possess little inherent capacity for communicating specific information, especially since they are commonly and widely used, because of their appeal, in order to advertise and market goods or services, without any specific message (06.05.2003, C-104/01, Libertel, EU:C:2003:244, § 40). "
"50 The CTM proprietor argues that the reproduction of the signdefines the mark as consisting of the colour blue depicted on the left and the colour silver on the right hand side, ('what you see is what you get'), and therefore limits possible arrangements to a degree which renders the signs sufficiently precise. However, as follows from above, in the case of a combination of colours per se, the description of the sign forms an integral part of the sign. Given the scope of protection which the choice of this category of mark encompasses, an explicit description to this effect would have been required in the present case. Furthermore, if the subject matter was to be restricted to the sign's reproduction (i.e. the image filed), such interpretation would qualify the sign as a figurative mark, namely a coloured rectangular shape with blue on the left and silver on the right hand side. However, a sign may not be re-categorized following its registration (see, to this effect, 12.11.2013, T-245/12, Green stripes on a pin, EU:T:2013:588)."
The judgment below
Glaxo,
that a trade mark consisting exclusively of one or more colours may include and encompass variants of the protected sign. He held that such a trade mark must consist of one and only one sign.
Glaxo
in proceedings in other jurisdictions and before EUIPO to constitute the mark. The round and rectangular abstractions asserted by
Glaxo
to be examples of the mark are depicted in the judgment and are reproduced below:
Sandoz
was therefore entitled to summary judgment, the Trade Mark was declared invalid and the claim for infringement was dismissed.
The appeal
Glaxo,
submits that the central question for the court concerns the interaction between the verbal description and the pictorial representation of an EU trade mark for a combination of colours per se. Further, he continues, this issue is currently pending before the General Court in the Red Bull case and this is, in and of itself, a very good reason why the judge should not have granted summary judgment. Moreover, the issue is certainly not acte clair and so the judge ought either to have dismissed the summary judgment application or made a reference to the CJEU for a preliminary ruling.
Glaxo
in other jurisdictions. He ought instead to have made up his own mind about the meaning of the mark and identified for himself the sign the subject of its protection.
Sandoz,
takes issue with each of the points made by Mr Malynicz and submits that the judge came to the right conclusion and that he did so for the right reasons.
"Where a combination of colours per se is applied for, the graphic representation as filed will determine the mark, including the proportion and position of the various colours, which must be clear from the representation ("WYSIWYG" what you see is what you get). This is required under para 33 of the judgment of the ECJ C-49/02 of 24.6.2004 "Heidelberger"." [original underlining]
"Colour per se means that trade mark protection is sought for one or several colours, regardless of any specific shape or configuration. What is protected is the shade of colour(s) and, in the case of more than one colour, the ratio and position of the various colours, which must be systematically arranged by associating them in a predetermined and uniform way … The representation of a colour per se mark must consist of a representation of the colour or colours without contours. Where there is more than one colour, the proportion of each colour must be specified in the mark description field….
When applying for a colour per se mark, the provision of a mere sample of the colour on its own is not sufficient; the colour or colours that are the subject of the mark must be described in words in the 'Indication of Colour(s)' field. Furthermore, it is highly recommended also to provide internationally recognised colour codes …
Pursuant to Rule 3(3) EUTMIR, an application for a colour per se mark may be represented by showing the colour or colours as they will be applied to the goods and services concerned. In such cases, a mark description is required in order to clarify the nature of the mark."
Glaxo,
said in his first witness statement dated 27 May 2016 at [38] that, at around the time the application for the Trade Mark was filed, it was fairly common to use an image of the goods to illustrate how the colour or colours the subject of the application would be applied. He then refers, by way of illustration, to a series of applications. It is true that each of the applications does contain a pictorial representation of the colour or colours applied to a sample of the goods. But each also contains a verbal description of how the colour or colours are to be applied to other goods of the same kind. One of the applications which received attention during the course of the hearing is shown below:
| Representation | Description | Goods |
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The colour green applied to the hood of an agricultural tractor or model agricultural tractor, to the rear wheel mudguards and to the cabin pillars, a silver strip applied to the hood, the colour white applied to the operator's cab roof, and the colour red applied to the wheel centers. Colour: A combination of green, red, silver and white. | Agricultural tractors, model agricultural tractors |
Glaxo
have never contended that the sign was some kind of abstraction; their position is and has always been that the sign is what is shown in the pictorial representation. The posited abstractions are simply illustrative of the sign's distinctive and important components and are different from the sign itself. Secondly, the judge fell into error in referring to contentions advanced before EUIPO and proceedings in other territories. There is no basis in law for construing an EU trade mark by reference to what anyone, whether it be the proprietor or a third party, has said about it.
Glaxo's
boot shaped inhaler, the Evohaler depicted at [7] above. How can the mark be applied to it? In my judgment it is impossible to say with any degree of certainty, and any attempt to do so would likely produce a result which creates a visual impression which is very different from that created by the pictorial representation. As the judge said, this is not a colour mark consisting of, say, stripes of two different colours of equal widths which could be applied without change to different shapes. Secondly, this interpretation is not consistent with the verbal description which is put in much more general terms. It does not say that the dark purple and the light purple colours should be applied to an inhaler of the shape and in the particular manner illustrated in the pictorial representation. It says instead that the mark consists of the dark purple colour applied to a significant proportion of an inhaler and the light purple colour is applied to the remainder of the inhaler. I think members of the public would therefore doubt whether Mr Malynicz's interpretation of the mark was correct.
Glaxo.
Furthermore, it is the way
Glaxo's
case has been developed in some other jurisdictions and before EUIPO. For the purposes of this appeal, however, I am prepared to accept Mr Malynicz's point that
Glaxo
are not bound by submissions they had made in other jurisdictions or before EUIPO. Nevertheless, it seems to me to be perfectly permissible for this court to consider whether the abstractions found in those submissions and reproduced at [48] above represent a possible interpretation of the mark. For my part, I consider that the abstraction interpretation would be thought by the public, including economic operators, to be plausible because it attempts to give some effect to the particular arrangement of colours shown in the pictorial representation while not limiting the mark to use in relation to any particular inhaler shape. However, there are three major problems with it. First, it is far from clear what degree of abstraction should be applied to the pictorial representation or what form the abstraction should take. The particular images shown at [48] above are those which appear in the submissions made by
Glaxo
before EUIPO but there are undoubtedly other possibilities too. Secondly and as I have already pointed out, the arrangement of the dark and light purple colours is not the same in each of these abstractions and so they are not representations of the same sign. Thirdly, the verbal description is again cast in much more general terms than either of them.
Glaxo an unfair competitive advantage. These deficiencies in the Trade Mark are compounded by the range of alternatives that the second and the third possible interpretations encompass. Just as in Heidelberger, each of them allows for numerous different combinations of the dark and light purple colours. Consequently, neither of them exhibits the qualities of precision and uniformity required by Article 4 of the EUTMR.
Lord Justice Floyd:
Sir Geoffrey Vos, Chancellor of the High Court: