Abbott Diabetes Care Inc v Sinocare Inc & Ors

A three-dimensional product shape may acquire distinctive character only where relevant consumers perceive the shape itself, rather than merely the product or an associated word mark, as indicating trade origin. Extensive sales, advertising and recognition of the product are insufficient without evidence that consumers rely on the shape alone as a badge of origin.

For the technical-result objection, the court must identify the sign’s essential characteristics and ask whether they all perform a technical function. The existence of alternative shapes does not prevent the objection. Infringement claims based on confusion, dilution or unfair advantage require evidence-based analysis of the relevant consumers’ likely behaviour. A non-distinctive product shape may be protected by the honest-practices defence where its use is fair competition.

Abbott owned a UK three-dimensional trade mark for the shape of an on-body unit used in continuous glucose monitoring systems. It alleged that Sinocare’s similar device infringed under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994, and brought a passing-off claim.

Sinocare counterclaimed for invalidity under sections 3(1)(b) and 3(2)(b). Abbott relied on extensive sales, advertising and survey evidence to establish acquired distinctiveness. Sinocare contended that the shape remained product-design functionality and that the surveys showed recognition rather than origin significance.

The central issues were whether the mark had acquired distinctive character, whether it consisted exclusively of characteristics necessary to obtain a technical result, and whether the pleaded infringement or passing-off claims succeeded.

1. Validity. The mark was invalid under section 3(1)(b) of the Trade Marks Act 1994. The relevant consumers included healthcare professionals, diabetic patients and wellness users. The evidence showed recognition of Abbott’s product and association with the FreeStyle Libre range, but did not show that consumers regarded the circular shape alone as a badge of origin. Abbott’s marketing consistently used its traditional word marks and logos and presented the sensor primarily by reference to its functionality, size and ease of use.
2. Survey evidence did not alter that conclusion. The surveys were affected by leading or priming questions, incomplete disclosure concerning the sample source and failure to test whether the shape was regarded as belonging exclusively to Abbott. The results established recognition, not acquired distinctiveness.
3. Technical result. The mark was independently invalid under section 3(2)(b). The essential characteristics were the flat circular shape, the outer adhesive area, the smooth texture and curved edges, and the central cogwheel. Each performed a technical function. The opaque or white upper section and the contrast with the lower section were not essential characteristics. The availability of alternative means of achieving some functions did not prevent the objection.
4. Infringement. Assuming validity, the claims under sections 10(2)(b) and 10(3) would fail. Products in the reimbursement market were selected and prescribed by reference to established brand and regulatory processes. Wellness consumers would likely research the product, its maker and its functionality, and would encounter the parties’ traditional origin identifiers. The evidence did not establish a likelihood of confusion, a change in economic behaviour, or a serious likelihood of such change. Nor did it establish detriment to distinctive character or unfair advantage.
5. The honest-practices defence under section 11(2)(b) would also have been available. Sinocare designed the device before knowing of the mark, conducted freedom-to-operate investigations, had a functional justification for the circular shape, and had not caused actual confusion. Its conduct amounted to fair competition.
6. Passing off. Abbott had goodwill, but consumers did not identify that goodwill with the shape alone. There was no relevant misrepresentation or damage.
7. Abbott’s claim was dismissed. Judgment was given on Sinocare’s counterclaim, and the mark was declared invalid and not infringed.