Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) and Another (Claimants/Appellants) v Sandoz Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin,Lord Justice Floyd,Sir Geoffrey Vos |
| Judgment Date | 10 May 2017 |
| Neutral Citation | [2017] EWCA Civ 335 |
| Docket Number | Case No: A3/2016/2941 |
| Court | Court of Appeal (Civil Division) |
| Date | 10 May 2017 |
[2017] EWCA Civ 335
THE CHANCELLOR OF THE HIGH COURT
Lord Justice Kitchin
and
Lord Justice Floyd
Case No: A3/2016/2941
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (INTELLECTUAL PROPERTY)
HIS HONOUR JUDGE HACON
Royal Courts of Justice
Strand, London, WC2A 2LL
Simon Malynicz QC and Alaina Newnes (instructed by Stephenson Harwood LLP) for the Appellants
Martin Howe QC and Iona Berkeley (instructed by White & Case LLP) for the Respondent
Hearing date: 9 March 2017
Approved Judgment
Introduction
This appeal concerns the validity of EU trade mark 3890126 ("the Trade Mark") and, specifically, whether it is invalid on the ground that the subject matter of the registration is not clear or precise and is not such that it will be perceived unambiguously and uniformly and so contravenes Article 4 of Council Regulation (EC) 207/2009 on the EU trade mark (the "EUTMR").
The Trade Mark is registered in respect of inhalers. The certificate bears the INID code 558. INID is an acronym for "Internationally agreed Numbers for the Identification of (bibliographic) Data". The INID system was developed by the World Intellectual Property Organisation and has been adopted by the European Intellectual Property Office ("EUIPO"), formerly the Office for Harmonization in the Internal Market ("OHIM"). It provides a series of codes which allow proprietors more easily to specify various characteristics of trade marks and third parties more easily to understand them. If the code 558 is used in relation to a trade mark registration it denotes that the mark consists exclusively of one or more colours.
The certificate also bears the following pictorial representation of the Trade Mark:
Underneath this representation there appears a description of the Trade Mark in different languages. The description in English reads:
"The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler."
The Trade Mark is owned by the second claimant and it and the first claimant (collectively "Glaxo") are part of the well-known GlaxoSmithKline group of companies ("GSK") which have their headquarters in Brentford in Middlesex.
For very many years GSK have made and sold throughout the world a pharmaceutical product comprising fluticasone propionate and salmeterol for the treatment of asthma and chronic obstructive pulmonary disease. There can be no doubt that this product has been very successful indeed. The value of sales made globally since launch amounts to in excess of $61 billion. In the UK the product is sold by Glaxo under the brand name Seretide and it has achieved sales with a value in excess of £4.3 billion.
Seretide is sold by Glaxo in the UK in two product forms. One is a dry powder or disc inhaler which is sold under the brand names Seretide and Accuhaler. This has the same appearance as the pictorial representation of the Trade Mark save that it also bears a largely white circular sticker in the centre of the disc bearing the words 'Seretide' and 'Accuhaler' and various product details. The other is a metered dose inhaler which has a 'boot shape' and is sold under the brand names Seretide and Evohaler. It looks like this:
On 7 December 2015 Glaxo issued these proceedings against the defendant ("Sandoz") asserting, inter alia, that it had infringed the Trade Mark by selling a generic version of Seretide called AirFluSal. Glaxo's complaint was directed at the appearance of AirFluSal which is shown below:
Sandoz responded in its defence and counterclaim that the Trade Mark was invalid because it covered a multitude of different forms and so was not capable of being represented graphically as required by Article 4 of the EUTMR. It asserted that this was confirmed by the various allegations of infringement made by the second claimant in other jurisdictions and by the contentions advanced by the second claimant in ongoing proceedings in the EUIPO.
On 19 February 2016 Sandoz applied for summary judgment on its claim that the Trade Mark was invalid. That application came on for hearing on 15 June 2016 before HH Judge Hacon sitting as a judge of the High Court. On 28 June 2016 he acceded to the application and held and declared that the Trade Mark was indeed invalid. He considered that the Trade Mark did not satisfy Article 4 of the EUTMR because it was not sufficiently precise and uniform; nor was it sufficiently clear and unambiguous. He refused Glaxo's application for permission to appeal.
Glaxo now appeal to this court with permission granted by Floyd LJ on the papers by order dated 11 November 2016. In broad outline, they contend that the judge failed properly to interpret the Trade Mark and that, had he done so, he would or ought to have found that it has only one possible meaning, namely that it comprises the dark and light purple colours in the specific proportions and arrangement shown in the pictorial representation of the mark on the certificate. Further, Glaxo continue, the wording on the certificate merely describes the mark in general terms and specifies the shades of the purple colours which it comprises. It does not broaden the scope of the mark or render it uncertain in any way.
The legal framework
Article 4 of the EUTMR as amended by Regulation (EU) 2015/2424 corresponds to Article 2 of Directive 2008/95/EC ("the Directive") and presently reads as follows:
"Signs of which an EU trade mark may consist
An EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
As I shall explain, one of the requirements of Article 4 as interpreted by the Court of Justice of the European Union ("the CJEU" or "the Court") is that the sign sought to be registered as an EU trade mark is capable of being represented on the register of EU trade marks ("the Register") in a clear and precise way which enables the relevant authorities and the public to determine the precise subject matter of the protection afforded to its proprietor. This is reflected in the replacement of Article 4 which will apply from 1 October 2017. It will read:
" Signs of which an EU trade mark may consist
An EU trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register of European Union trade marks, ("the Register"), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor."
Article 7 of the EUTMR addresses the absolute grounds for refusal of an application to register a sign as an EU trade mark and provides in material part:
"1. The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;"
Article 52 deals with the absolute grounds for invalidity and reads in material part:
"1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the EU trade mark has been registered contrary to the provisions of Article 7;"
I must also refer to the relevant rules implementing the EUTMR. These are contained in Commission Regulation (EC) 2868/95 as amended by Regulation (EU) 2015/2424 (as so amended, "the Implementing Regulation"). Rule 1(1)(d) says that an application for an EU trade mark must contain a representation of the mark in accordance with Rule 3.
Rule 3(1) deals with applications for the registration of conventional word marks and says, so far as material:
"(1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script as for example, by typing the letters, numerals and signs in the application ……"
Rule 3(2) addresses applications for the registration of marks other than those referred to in paragraph (1). It therefore applies to applications for the registration of marks such as the Trade Mark and lays down certain requirements that the representation of the mark must satisfy. It says, so far as relevant:
"(2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears…. Where it is not obvious, the correct position of the mark shall be indicated by adding the word 'top' to each reproduction …."
Rule 3(3) reads:
"(3) In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark."
Rule 3(4) deals with applications for registration of three-dimensional marks and Rule 3(5) deals with applications for registration of marks in colour. It says:
"(5) Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be...
To continue reading
Request your trial
-
Fromageries Bel SA v J Sainsbury Plc
...of red shown in the picture.” 15 With regard to his point (ii), the Hearing Officer relied on Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335; [2017] FSR 33, drawing an analogy with this case and thereby the principle that the picture in a trade mark specification could not be relie......
-
Pathway IP Sarl (formerly Regus No. 2 Sarl) v Easygroup Ltd (formerly Easygroup IP Licensing Ltd)
...of the EUIPO and UKIPO is far from determinative; see Kitchin LJ in Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) v Sandoz Ltd (No 2) [2017] EWCA Civ 335; [2017] FSR 33 at [62] and [67]. However, such practice was considered in the Altecnic case and the parties are agreed that the practice ......
-
Energy Beverages LLC v Frucor Suntory New Zealand Ltd
...at [33]. 20 See [24] above. 21 Société des Produits Nestle SA v Cadbury UK Ltd, above n 17; Glaxo Wellcome UK Ltd v Sandoz Ltd (No 2) [2017] EWCA Civ 335, [2017] FSR 33; and Frucor Beverages Ltd v Coca-Cola Company [2018] FCA 993, (2018) 358 ALR 22 High Court judgment, above n 5, at [66]. ......
-
Société des Produits Nestlé S.A. v Cadbury UK Ltd
...by the UKIPO and by the EUIPO in relation to colour marks. Mr Hughes for the Comptroller pointed out that in Glaxo Wellcome v. Sandoz [2017] EWCA Civ 335 at [66] the Court of Appeal, in considering aspects of colour marks with a description by a depiction of the product, said that such gui......