The Court of Appeal has confirmed that a combination colour mark for inhalers was invalid as it was not graphically represented.
Article 4 of the EU Trade Mark Regulation (207/2009/EC) (Article 4) provides that an EU trade mark (EUTM) must be capable of being represented graphically.
The European Court of Justice (ECJ) has held that a graphical representation of a colour combination in a trade mark application consisting of two or more colours, designated in the abstract without contours, must be systematically arranged by associating the colours in a pre-determined and uniform way (Heidelberger Bauchemie GmbH C-49/02).
A two-colour combination sign where the graphic representation is of two blocks of colour (blue and silver) in rectangular form, and the description states that the colours are applied in approximately equal proportion and juxtaposed, is currently pending before the EU General Court (Red Bull GmbH v Optimum Mark Sp. z.o.o).
G sued S for infringement of its registered mark. The mark was described in the registration as consisting of a specific dark purple applied to a significant proportion of an inhaler, and a specific light purple applied to the remainder of the inhaler and it was accompanied by a colour photograph showing those colours as applied to an actual inhaler.
S applied for summary judgment seeking a declaration that the mark was invalid as it failed to satisfy Article 4.
The High Court ordered summary judgment. G appealed.
The court dismissed the appeal. It held that the mark lacked the clarity, intelligibility, precision, specificity and accessibility that the law demanded and that the registration was therefore invalid. It also held that the case had been a suitable one for summary judgment.
For marks designated as colour marks there was no case law to suggest that the pictorial representation took precedence over the verbal description. The description was particularly important for these marks as it could help to make the scope of the mark clear and precise. The representation and the description had to be considered as a whole. Although under Rule 3(2) of the EU Trade Mark Rules a verbal description was non-mandatory, this merely reflected the fact that it would not always be necessary to include one. Arguments relating to the content of the EU Intellectual Property Office's guidelines for examination of EUTMs were dismissed as they had no legislative force.
The court considered three possible interpretations of the mark and found that none of them satisfied the applicable test of clarity, intelligibility, precision, specificity and accessibility. The least bad of the three interpretations was that the mark consisted of any proportions of the two colours falling within the verbal description, with the pictorial illustration being merely an illustration of one form the mark might take. This reconciled the pictorial representation, verbal description and Internationally agreed Numbers for the Identification of bibliographic Data code, which indicated that the mark was a "colour per se" mark. However, there were still various ways of interpreting the information contained in the registration, and this led not only to ambiguity but also to unfairness since it widened the possible scope of protection and gave the proprietor an unfair competitive advantage.
ECJ case law was clear on the relevant points so it was not appropriate to request a preliminary ruling. The central issue in Red Bull was different: whether the two colour swatch with side-by-side colours should be interpreted as defining not only the colours but also the shapes and positions in which they appear.
The key message here is that ambiguities as to interpretation of colour marks, which would leave the public and other traders puzzled, will clearly not be perceived uniformly or unambiguously by all. The boundaries of registered trade mark protection must be clearly delineated for the purposes of deciding oppositions as well as infringements.
The law relating to the representation of marks in EUTM applications and registrations will change from 1 October 2017, when the requirement for graphical representation will become merely a requirement for representation in some form. However, the new wording of Article 4 will expressly require that marks can be represented on the register in a manner which enables the authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. So, as the court noted, the authorities and the public including competitors of the trade mark proprietor will still have to be able to identify the sign clearly and precisely under the revised EUTM Regulation.
Case: Glaxo Wellcome UK Ltd v Sandoz Ltd  EWCA Civ 335.
First published in the July 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.