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

For a colour per se trade mark, the graphical representation comprises the pictorial representation and any accompanying verbal description, read together without either taking precedence. The representation must identify the protected sign clearly and precisely, so that authorities and the public perceive it unambiguously and uniformly.

A combination of colours must associate them in a predetermined and uniform way. A registration fails where its components permit several plausible interpretations or numerous arrangements, leaving the scope of protection uncertain. Such uncertainty also confers an unfair competitive advantage. Administrative guidelines and filing practice cannot qualify the governing legislation or authoritative judicial interpretation.

Glaxo owned an EU trade mark, registered for inhalers as a combination of dark and light purple colours. Its certificate contained a pictorial representation of an inhaler, INID code 558 identifying a colour per se mark, and a verbal description applying dark purple to a significant proportion of an inhaler and light purple to the remainder.

After Glaxo brought infringement proceedings concerning Sandoz's AirFluSal inhaler, Sandoz counterclaimed that the trade mark was invalid. HH Judge Hacon granted summary judgment, declared the mark invalid under Article 4 of the Council Regulation (EC) 207/2009 on the EU trade mark, and dismissed the infringement claim: [2016] EWHC 1537 (Ch).

The appeal concerned how the pictorial representation and verbal description of a colour per se mark interact, whether the registration identified one clear and precise sign, and whether those questions required trial or a reference to the Court of Justice.

1. Appeal dismissed unanimously. Lord Justice Kitchin, with whom Lord Justice Floyd and the Chancellor agreed, held that the trade mark lacked the clarity, intelligibility, precision, specificity and accessibility required by Article 4 of the Council Regulation (EC) 207/2009 on the EU trade mark. The public would not perceive the protected sign unambiguously and uniformly.

2. The graphical representation of a colour per se mark encompasses both its pictorial representation and any accompanying verbal description. The court must consider them together as a whole. Neither is paramount or merely secondary. Although a description is optional for some categories of mark, it may be indispensable where colours are claimed without contours.

3. INID code 558 indicated that the registration concerned colours exclusively. It was therefore neither a two-dimensional figurative mark nor a three-dimensional mark confined to the depicted inhaler. The register nevertheless supported three plausible understandings: the precise depicted arrangement; an abstraction from that arrangement capable of fitting other inhaler shapes; or any arrangement satisfying the broad verbal description. Each interpretation created difficulties, and the latter two permitted numerous combinations of the colours.

4. A combination of colours claimed in the abstract must associate them systematically in a predetermined and uniform way. The registration failed that requirement. The uncertainty also offended the principle of fairness by giving the proprietor an unfair competitive advantage and preventing competitors from determining the extent of the protected right.

5. EUIPO examination guidelines had no legislative force and could not determine the meaning of the governing Regulation. Nor could asserted filing practice provide a proper basis for its interpretation.

6. Summary judgment was appropriate because neither party suggested that further evidence or disclosure would affect its case. The applicable principles had been settled by the Court of Justice, the pending Red Bull proceedings concerned a different issue, and no preliminary reference was required. The declaration of invalidity and dismissal of the infringement claim therefore stood.

1. Court of Appeal (Civil Division): The court unanimously dismissed Glaxo's appeal and affirmed the declaration that the trade mark was invalid: [2017] EWCA Civ 335.
2. High Court, Chancery Division: HH Judge Hacon granted Sandoz summary judgment, declared the trade mark invalid, dismissed the infringement claim and refused permission to appeal: [2016] EWHC 1537 (Ch).