In a decision of the English High Court, GSK has had its European Union trade mark registration for a two-colour combination mark cancelled on a summary judgment basis. Readers may sense a recent trend, recalling how the English courts have been denying trade mark protection to other non-traditional trade marks, including Nestlé’s Kit Kat shape, Cadbury’s purple colour, the London taxi shape and Mattel’s Scrabble tile.

The sign in this case, Glaxo v Sandoz, showed a side-on representation of GSK’s Seretide inhaler (shown above), in which the majority of the shape is in a dark purple colour and the rest a paler purple. The downfall for this registration was not that the sign might not be able to function as a trade mark nor that it had not acquired sufficient distinctiveness, but rather that the combination of the image and the description failed to represent a single sign. The description identified the colours using Pantone codes, with the first “applied to a significant proportion of an inhaler” and the second applying to the rest of the inhaler.

The question was whether this combination satisfied the old requirement that the sign must be “capable of being represented graphically (emphasis added). Ironically, the word “graphically” was removed from the test in March 2016. The new test in the amended Article 4 of the EU Trade Mark Regulation replaces it with the more expansive: “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection.” Despite this change, His Honour Judge Hacon (who usually presides over the IPEC) effectively applied the new test anyway. He concluded that neither the image nor the words prevailed but that there was no “strict congruence” between them here. As a result, GSK’s representation did not clearly and unambiguously relate to just one sign. Instead, it posed a “puzzle for the reader” and could represent multiple arrangements of the two purples on an inhaler.

HHJ Hacon was clear that it was not permitted for a trade mark to be protecting a sign taking more than one form or variant. He felt able to reconcile this with the acknowledged convention that a word registered in a plain capitalised font is understood to represent a form of that word in any font or stylisation. However, it is not clear how this is reconciled with the English Court of Appeal’s confirmation, in the Glee case only a few weeks earlier, that “series” trade marks under s41 UK Trade Marks Act 1994 can be valid in EU law, even though they protect apparent variants of a sign.

A similar issue is already pending before the EU General Court in the Optimum v Red Bull case. That case concerns a two-colour combination sign where the graphic representation is less complex and much more standard than GSK’s inhaler, namely it shows two blocks of colour side-by-side (blue and silver) and the description states that the colours are applied in equal proportion and juxtaposed. This was essentially the same graphic image format that had been used in the leading CJEU decision on this topic (Heidelberger Baumchemie). HHJ Hacon expressed a view that such images give “little or nothing by way of an indication of the precise and uniform mark which was being claimed”. Seemingly his view would be that again there would be no “strict congruence” between those images and the descriptions. Whilst such an image and words might not obviously pose a “puzzle for the reader”, it is being argued by Optimum and the EUIPO that they encompass multiple arrangements, such as stripes, circles, stars etc., i.e. anything so long as the colours are in the right proportion. However, such a view seems to downplay the graphic representation that shows solid blocks of colour and allows the description to prevail entirely. It seems there is at least greater “congruence” with such images than for the GSK inhaler.

The General Court in Red Bull will hopefully help find the right balance between the extremes of ignoring the image and the alternative of “what you see is what you get” (WYSIWYG). That case is only an appeal from the EUIPO Board of Appeal (due to be heard later this year) and so is not a reference to the CJEU for interpretation of the law. Nevertheless, the European trade mark owners’ organisation, MARQUES, has considered it important enough to merit a formal intervention to help secure clarity about two-colour combination marks.

For now we are in a curious position that the English courts and the EUIPO Board of Appeal are applying the law such that it is easier to satisfy the basic registry requirements in an application for a single colour mark than it is for a combination of two or more colours. One has to question the sense of this when it is the former that is granting the widest form of monopoly. Not just clarity is needed here. Brand owners want the test to be commercially realistic and practical.