UK Limited and Glaxo Group Limited v
Sandoz Limited, Sandoz has succeeded in
the High Court in a counterclaim for a
declaration of invalidity of an EU trade
mark registration of an EUTM registration
of a combined colour mark registered for
inhalers in class 10. The counterclaim was
in response to Glaxo's claim that Sandoz
had infringed the registration.
following description:
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."
Council Regulation (EC) 207/2009, namely
that the mark was not a sign and was not
capable of being represented graphically.
relevant case law on colour marks,
including Heidelberger Bauchemie,
Libertel, Nestlé v Cadbury and Sieckmann.
The essence of these cases is that a mark
must be clear, precise, unambiguous and
uniform in order to comply with Article 4.
of Glaxo that the visual representation
should be the primary indication of the
scope claimed, and on behalf of Sandoz
that the description was the definitive
description of the mark by virtue of the
words "...consists of...", Judge Hacon
concluded that, because the visual
representation and the description did not
each element equal consideration without
precedence over the other.
a puzzle with three possible solutions: a
mark with the outline of the visual
representation and the precise
combination of light purple and dark
purple; a mark with the many alternatives
for which the description provided; or a
pattern abstracted from the
representation of the mark. He held that
only the first of these solutions equated
to a single mark and that the ambiguity
caused by the possible solutions meant
that the mark was insufficiently precise,
uniform, clear or unambiguous. He
therefore upheld the counterclaim for a
declaration of invalidity and dismissed the
infringement claim.
defeat due to the body of case law on
colour marks subsequent to the 2004 date
of application for registration of their
mark. In retrospect, the mark arguably
does not comply with the criteria
subsequently established by the cases
mentioned above, so the case serves to
underline the need to review portfolios
and to try to determine whether
registrations of marks which are more
complex than words and/or logos are
likely to overcome attacks of this nature
on their validity.
Court
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