Re Smith Kline & French Laboratories Ltd's Applications
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE RUSSELL,LORD JUSTICE BUCKLEY,LORD JUSTICE LAWTON |
| Judgment Date | 08 May 1974 |
| Judgment citation (vLex) | [1974] EWCA Civ J0508-5 |
| Court | Court of Appeal (Civil Division) |
| Date | 08 May 1974 |
[1974] EWCA Civ J0508-5
In The Supreme Court of Judicature
Court of Appeal
Civil Division
Lord Justice Russell,
Lord Justice Buckley and
Lord Justice Lawton
On appeal from Order of Mr Justice Graham.
Mr g. d. EVERINGTON, Q. C. and Mr ANTHONY ROGERS (instructed by Messrs McKenna & Co.) appeared on behalf of the Appellants (Opponents).
Mr T. A. BLANCO WHITE, Q. C. and Mr ROBIN JACOB (instructed by Messrs Woodham Smith & Greenwood) appeared on behalf of the Respondents (Applications).
This is an appeal by the Opponent from a decision of Mr Justice Graham (reported in 1974 Reports of Patent Cases, 91) dated the 14th June, 1973, by which he (in effect) directed the Registrar of Trade Marks to accede to ten applications by the Respondents to this appeal for registration of ten trade marks. Each application was in connection with a particular get-up of a soluble capsule containing a drug in pellet form, which get-up was on the evidence distinctive of the Applicant's goods. The get-up of the Applicant's capsules consisted in one half being coloured (sometimes opaque and sometimes translucent), the other half being colourless and transparent, the actual drug being in pellet form, and the pellets being each coloured with one of two or more colours (including white), thus giving a speckled or stippled effect to the uncoloured transparent half of the capsule.
It is convenient to take one application as typical of all, and I take No. 849,769 in which the Applicant marketed a drug called by it "Eskornade", of which the chemical make-up or approved name is diphenylpyraline hydrochloride: isopropamide iodide: and phenylpropanolamine hydrochloride. The application in its original form in May, 1963, consisted of a coloured photograph of the capsule and the legend "The trade mark consists of a capsule of which one half is coloured opaque dark grey, the other half colourless, containing pellets coloured grey/red/white". Registration was sought in respect of "Pharmaceutical substances sold in capsules". Later it is to be assumed that the application was amended, for as advertised in the Trade Marks Journal it was related to "Pharmaceuticalsubstances sold in pellet form within capsules" and was thus described: "The trade mark consists of a dark grey colour applied to one half of the capsule at one end, the other half being colourless and transparent, and grey, red and white colour 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 ….".
In his decision the Registrar (a) considered that there was here a mark capable of being a trade mark, but (b) refused the application on the ground that it (the mark) was not inherently adapted to distinguish goods of the proprietor of the mark from other goods. On the originating motion by the Applicant by way of appeal from that decision, Mr Justice Graham agreed with the Registrar on point (a) but disagreed on point (b) and allowed the appeal.
Two points may be conveniently here mentioned. It had been argued below by the Opponent (the present Appellant) that section 11 of the Trade Marks Act, 1938, prevented registration: but that point was not really pursued in this Court. Secondly: the Judge by his Order narrowed in each case the application of the mark to goods, by adding to the general reference to "Pharmaceutical substances sold in pellet form within capsules" the approved name or description of the particular drug sold in the particular colour combination. This was the subject of the cross-appeal by the Applicant. The learned Judge appreciated that this could have the effect of enabling a rival to sue any of the marks, providing that he put a different or somewhat different drug in the capsule, without infringing the trade mark, but considered that the law of passing off would sufficiently protect the Applicant insuch a case. The Opponent in this Court did not resist the cross-appeal, should the appeal fail, and I think rightly. Granted all else in favour of the Applicant, I consider that the particular restriction was not justified.
Consequently, the issues are narrowed to two. First: whether there is here a "mark" within the Trade Marks Act, 1938. Second: if so, whether it is not only in fact adapted to distinguish but also inherently so adapted.
The interpretation section 68 provides that "'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". The section also provides that "'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof". Section 68(2) is in these terms: "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 constured as references to the use thereof upon, or in physical or other relation to, goods".
Reference to colour in trade marks was first introduced in 1905, and is now to be found in section 16 of the 1938 Act as follows: "A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of the trade mark. If and so far as a trade mark is registered without limitation of colour, itshall be deemed to be registered for all colours".
Section 9 of the 1938 Act deals with the distinctiveness requisite for registration in Part A of a trade mark. It must contain or consist of at lest one of the following essential particulars: (a) the name of a company, etc., represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) an invented word or invented words; (d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or surname; "(e) any other distinctive mark ……".
It is under (e) that the Applicant contends for registration. Subsection (2) provides that "'distinctive' means adapted in relation to the goods in respect of which a trade mark is …. proposed to be registered, to distinguish goods with which the proprietor of the trade mark is …. connected in the course of trade from goods in the case of which no such connection subsists ….". Subsection (3) is as follows: "In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which — (a) the trade mark is inherently adapted to distinguish as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid". It is under (a) that there is a difference of view between the Registrar and the learned Judge.
On the first question in this appeal, which is I apprehend the question of the greater importance, it is I think of the first importance to observe this fact: thatin the case of No. 849,769 (and of course each other application) it is not possible to describe or represent that which is said to be the mark without describing or representing the whole exterior appearance of the goods in relation to which it is proposed to be used. I believe that the one question is whether such is properly to be regarded as a "mark". In perhaps an over-simplified form, it was asked in the course of argument whether there was a distinction between a badge and an overall livery. Applying the question to a specific case in the books, where a blue/red/blue stripe throughout the length of Reddaway's fire hose was registrable as a trade mark, would the answer have been otherwise had the stripes been accustomed to be applied round the whole circumference of the hose as distinctive of the applicant's goods and had the mark applied for been equally extensive?
At this point it should I think be noticed that the fact that we are concerned here with colours does not by itself answer the question. Section 16 does not provide that any colour or colour schme is necessarily a mark: though in a given case it may be only by the use of colour that a mark is discernible, as in Reddaway's case where there could not have been three stripes of the same neutral colour as the rest of the fire hose: see contra the argument in Reddaway's case, 31 Reports of Patent Cases, at page 152. In the present case what is relied upon in, for example, No. 849,769 is described in argument as the pattern, which is exhibited in fact by the capsule.
The definition of "mark" in the statute is of course not confined to the items which it is said to include, and we were invited to consider a number of dictionary definitions.Chambers (1901) includes "a visible sign": "that by which anything is known": "a badge". Chambers (1952) includes "a visible indication or sign": "a distinctive device": "a brand": "a streak, smear or other local modification of appearance". Murray's Oxford Dictionary has a main heading III, "a sign, token, indication", and thereunder numbered Arabic 10 "an appearance, action or event that indicates something: a sign, token, symptom": and further numbered Arabic 11, "a sign affixed or impressed for distinction", and "(a) a device, stamp, seal, label, brand, inscription, written character, or the like placed upon an article as an indication...
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