Re Smith Kline & French Laboratories Ltd's Applications

JurisdictionEngland & Wales
CourtHouse of Lords
JudgeLord Diplock,Lord Simon of Glaisdale,Lord Cross of Chelsea,Lord Kilbrandon,Lord Salmon
Judgment Date21 May 1975
Judgment citation (vLex)[1975] UKHL J0521-2
Date21 May 1975

[1975] UKHL J0521-2

House of Lords

Lord Diplock

Lord Simon of Glaisdale

Lord Cross of Chelsea

Lord Kilbrandon

Lord Salmon

Smith Kline and French Laboratories Limited
and
Sterling-Winthrop Group Limited

Upon Report from the Appellate Committee, to whom was referred the Cause Smith Kline and French Laboratories Limited against Sterling-Winthrop Group Limited, That the Committee had heard Counsel, as well on Thursday the 6th, as on Monday the 10th, Tuesday the 11th and Wednesday the 12th, days of March last, upon the Petition and Appeal of Smith Kline and French Laboratories Limited of Welwyn Garden City, in the County of Hertfordshire, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 8th of May 1974, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioners might have such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Case of Sterling-Winthrop Group Limited, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:

It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 8th day of May 1974, complained of in the said Appeal, be, and the same is hereby, Reversed: And it is further Ordered, That, so far as regards the words, " This Court doth Order that the said Registrar do proceed with the said Applications", and so far as regards Costs, the Order of the Honourable Mr. Justice Graham of the 14th day of June 1973, be, and the same is hereby Restored: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.

Lord Diplock

My Lords,

1

The Appellants, whom I will call "SKF", are manufacturers of pharmaceutical products. Among their products are what are known as "sustained release" drugs. They are made up into small spherical pellets enclosed in soluble capsules of familiar shape—cylindrical with hemispherical ends. Each pellet consists of a neutral core, generally sugar, on which is painted a coating of the active drug. Over the drug is painted an outside coating of a substance which dissolves slowly in the digestive system of the patient. The drug does not become effective until the capsule and the outside coating of the pellet has been dissolved. By varying the thickness of the outer coating on the individual pellet or the substance of which the coating is composed the period during which the total quantity of the drugs in the capsule is released into the digestive system of the patient can be regulated.

2

The three essential ingredients of the pellets, the core and its two coatings, are white or nearly so when in their natural state. The outer capsule is transparent. In order to distinguish their sustained release drugs from those of other manufacturers SKF adopted the practice of applying a coating of colour to one half of the capsule, leaving the other half transparent so that the pellets in the capsule were visible through it. Instead of leaving all the pellets in their natural colour they made them in different and distinctive colours so that when seen through the transparent half of the capsule they looked like miniscule specimens of the sweet which in my childhood days was called "hundreds and thousands". The colour is applied to the pellets in the form of a third coating painted on between the inner coating consisting of the drug and the outer coating consisting of the substance which delays the release of the drug into the digestive system of the patient.

3

SKF applied a different combination of colours on the capsule and the pellets for each of the various sustained release drugs that they manufactured. Most of the drugs were ethical, that is, available only on prescription, but there were two which could be bought from pharmacists without prescription. In May 1963 SKF applied to register ten of these distinctive colour combinations used on their capsules and the pellets contained in them, as associated trade marks for "Pharmaceutical substances sold in pellet form within capsules" in Class 5 of the Register of Trade Marks. The descriptions of the marks contained in the original applications were subsequently amended, and as ultimately advertised in the Trade Marks Journal of 11th January 1967, they were in terms, of which it is only necessary to refer to one as a typical example: —

"The Trade Mark consists of a maroon colour applied to one half of the capsule at one end, and the other half being colourless and transparent, and yellow, blue and white colours being each applied to a substantial number of pellets so that each pellet is of one colour only.

A specimen of the Mark may be seen at the Trade Marks Registry of the Patent Office".

4

The representation of the mark which had accompanied the original application had been a colour photograph of the capsule, but owing to the imperfections and lack of durability of the colours in the photograph, the Registrar had exercised his power under Rule 24 of the Trade Marks Rules 1938 to require a specimen of the trade mark upon an actual capsule to be deposited in the Registry.

5

Registration was opposed by the Respondents, who are rival manufacturers of pharmaceutical products, in proceedings before the Assistant Registrar, Mr. Moorby, in November 1971. The evidence was overwhelming that by that time those who composed the market in which such drugs are sold in the United Kingdom, viz. doctors and hospital administrators and wholesale and retail pharmacists, unhesitatingly recognised the colour combinations of capsules and pellets used by SKF as indicating that the drugs were of SKF's manufacture. So distinctive have they become that it is now conceded by the Respondents that the use by any other manufacturer of these particular colour combinations for drug capsules containing pellets would amount to a "passing off" at common law and could be restrained by injunction.

6

The colour combinations have thus been shown by undisputed evidence to serve the business purpose of a trade mark. They do precisely what a trade mark is meant to do: they indicate lo potential buyers that the goods were made by SKF and not by any other manufacturer. To the ordinary business man it would, I think, appear a strange anomaly in the law of trade marks if these colour combinations applied to the capsules and their pellets were disentitled to the protection conferred by registration.

7

The main ground upon which the respondents relied in justification of this apparent anomaly was that what SKF claimed to be their trade mark was the mere external appearance of the goods in respect of which its registration was sought, and that upon the true construction of the Trade Marks Act 1938 this was incapable of being a "mark" registrable as a "trade mark". This argument failed before the Assistant Registrar. On the appeal from his decision to the High Court it also failed before Graham J., but it succeeded in the Court of Appeal from whose decision this appeal comes to your Lordships' House.

8

Since the question is one of statutory construction I go straight to the relevant provisions of the Act. The definitions of "trade mark" and of "mark" are in section 68(1). So far as is relevant for the purposes of the present case they read:

"' trade mark ' means … a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right … as proprietor … to use the mark."

"' mark ' includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof."

9

"Trade Mark" is so defined as to limit its meaning to a mark which serves a particular purpose. "Mark", on the other hand, is not defined in such a way as to prevent there being ascribed to it its ordinary meaning in the English language as well as those more specific meanings stated to be included in the expression "mark". As reference to any dictionary will show, "mark" is a word which in ordinary speech is capable of bearing a wide range of meanings according to the context in which it is used. For present purposes the relevant context in which it is used is that of the definition of "trade mark".

10

That definition is supplemented by section 68(2) which reads as follows:

"References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods."

11

So, if it is to be a trade mark, a "mark" must be something that can be represented visually and may be something that can be applied to the surface of the goods ("use upon") or incorporated in the structure of the goods ("use in physical relation to"). The inclusion of "heading" (viz. coloured threads woven into the selvedge of textile goods) in the meaning of "mark" also confirms that a mark, provided that it can be seen upon visual examination of the goods, may be incorporated in their structure.

12

My Lords, I...

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  • Shaving the Trade Marks Directive Down to Size?
    • United Kingdom
    • The Modern Law Review Nbr. 63-4, July 2000
    • 1 July 2000
    ...position and apply a single test of distinctive character. This would also42 In Smith, Kline & French Ltd’s Trade Mark Applications [1976] RPC 511, 538, Lord Diplock statedthat the reference to inherent distinctiveness under the Trade Marks Act 1938 gave expression to theprinciple that,......

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