Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd

A colour mark must identify a single sign with sufficient clarity, precision, uniformity and objectivity to define the scope of protection. The visual representation and description must be construed together, without automatic precedence for either. A description permitting numerous arrangements, proportions or forms will not satisfy Article 4 of the Trade Mark Regulation. A colour mark cannot validly consist of variants around an insufficiently defined sign. Minor variations may be tolerated only where they are insignificant and unnoticed by the average consumer.

Sandoz applied for summary judgment on its counterclaim that Glaxo’s EU trade mark for inhalers was invalid, and for dismissal of Glaxo’s infringement claim. The mark was designated as a colour mark and was described as dark purple applied to a significant proportion of an inhaler, with light purple applied to the remainder.

The central issues were how the visual representation and description should be construed where they were not strictly congruent, and whether a colour mark could encompass variants of a single sign without infringing the requirements of Article 4 of the Trade Mark Regulation.

1. Construction of the registration. The court, rather than the average consumer, must determine the single correct interpretation of a trade mark application or registration. Where the mark is designated by INID code 558, it must be construed as consisting exclusively of one or more colours. The visual representation and description must then be reconciled without formal precedence for either. Their relative weight depends on the circumstances.
2. Requirement of a single, precisely defined sign. Article 4 requires a colour mark to be a sign capable of graphic representation. It must be clear, precise, unambiguous and uniform. A mark cannot validly consist of variants around a single sign. Any minor variation must be insignificant and go unnoticed by the average consumer.
3. The principles in Heidelberger Bauchemie GmbH [2004] E.C.R. I-6152 and Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174; [2014] R.P.C. 7 required a colour combination to be arranged in a predetermined and uniform way. Apple Inc v Deutsches Patent- und Markenamt EU:C:2014:2070 did not establish that a trade mark may comprise variations of one sign.
4. The visual representation and description of Glaxo’s mark left uncertainty about the relative proportions, arrangement and overall form of the colours. It therefore encompassed multiple possible signs and failed the requirements of precision, uniformity, clarity and unambiguity under Article 4.
5. No reference to the Court of Justice was required. The applicable law was acte clair or acte éclairé, notwithstanding the related issue pending in Red Bull GmbH v Optimum Mark Sp. z.o.o. R 2037/2013-1.
6. The mark was invalid under Articles 52(1)(a), 7(1)(a) and 4 of the Trade Mark Regulation. Glaxo’s infringement claim was dismissed.