High Court ruling highlights need for trade mark owners to be specific about scope of their rights, says expert

Specialist in brand protection and intellectual property law Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said a High Court ruling issued earlier this week showed that trade mark holders can fail in their attempts to clampdown on alleged infringers and lose their rights by being too vague in describing the scope of their marks.

In its ruling the High Court said that a colour trade mark owned by a business within the GlaxoSmithKline (GSK) group was invalid and dismissed its claims of infringement of that mark by rival pharmaceuticals company Sandoz.

A description of the registered EU trade mark said the mark consisted of a particular shade of dark purple, Pantone code 2587C, and applied to "a significant proportion" of an inhaler product GSK manufactured for the treatment of asthma and chronic obstructive pulmonary disease. A visual representation of the mark shows that it also comprises a lighter shade of purple.

The High Court said, though, that GSK's trade mark was "not sufficiently precise and uniform ... nor … sufficiently clear and unambiguous" to accord with the requirements of EU trade mark law.

Those laws state that EU trade marks can consist of any signs capable of being represented graphically provided that such signs are capable of distinguishing the goods or services of one business from those of others. Trade marks that fail to accord with those provisions are subject to invalidation.

From October next year applications for EU trade marks will no longer need to be capable of being represented graphically to qualify for trade mark protection.

In his ruling His Honour judge Hacon, sitting as a High Court judge, considered the fact that there was a difference between the visual representation of GSK's trade mark and the way it had been described in registration.

The judge said that courts "must do [their] best to reconcile the visual representation and the description if there is no strict congruence between them". He said that in deciding what the correct interpretation of a trade mark is both the visual representation and description of that mark should be "considered without any formal precedence, one over the other" and that  the weight given to each aspect "will depend on the circumstances" of individual cases.

Judge Hacon said, though, that in the case of colour trade marks they cannot "be validly composed of variants around a single sign" under the requirements of EU trade mark law. This is because "a sign must be clear, precise, unambiguous and uniform" to qualify as an EU trade mark, he said.

In other cases that do not concern colour trade marks, signs could contain "very minor variations" and still accord with the legal standard for EU trade marks, the judge said.

"If so, they will be insignificant and go unnoticed by the average consumer," the judge said in his ruling.

"The case is another reminder of the challenges posed by non-traditional trade marks," said Mitton of Pinsent Masons. "In this case, the mark fell down because it was too vague for the court to be able to determine its precise scope. The description of the mark, and in particular use of the words 'significant proportion' when referring to the dark purple element of the mark proved fatal, in the same way that Cadbury’s colour purple mark suffered from its claim of purple being the 'predominant colour'." 

"Trade marks need to be precise and unambiguous and marks which do not allow third parties to be able to identify the scope of protection sought or afforded will fail," she said.

Mitton said that it is highly unlikely that a different decision would have been reached had the matter been considered under the new EU rules due to come into force in October 2017 given the reasoning of the judgment

"Although the revised legislation will remove the requirement that a mark must be capable of being represented graphically, the new wording of Article 4 [of the EU Trade Mark Regulation] provides that trade marks must still be capable of being represented on the register in a clear and precise manner such that the scope of protection afforded by a trade mark can be determined," Mitton said. "The judge’s assessment in this case that the mark was 'not sufficiently precise and uniform … clear and unambiguous' means that the mark would fall foul of the new requirements."

Mitton said she would expect GSK to appeal the High Court's decision, which she said relates to a broader pan-European dispute.