Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd [2017] EWCA Civ 335 (10 May 2017)

Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd [2017] EWCA Civ 335 (10 May 2017)

The trade mark registration was invalid because the combination of the pictorial representation and the verbal description did not define the subject matter of protection with sufficient clarity, precision, and unambiguity as required by Article 4 EUTMR. The mark could take multiple forms and arrangements, leaving the public and authorities uncertain as to its scope. Both the pictorial and verbal elements must be considered together, and here, their lack of congruence rendered the mark invalid.

Citation
[2017] EWCA Civ 335
Parties
Claimant/appellant: Glaxo Wellcome UK Ltd (t/a Allen & Hanburys); Claimant/appellant: Glaxo Group Ltd; Defendant/respondent: Sandoz Ltd
Jurisdiction
England and Wales
Judgment Date
10 May 2017
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From Summary Judgment in High Court
Outcome
Appeal dismissed; summary judgment for respondent upheld; trade mark declared invalid.
Legal Topics
Trade Marks, EU Trade Mark Regulation, Graphical Representation of Trade Marks, Colour Marks, Absolute Grounds for Refusal, Invalidity of Trade Marks
Intellectual Property Law European Union Law Trade Marks EU Trade Mark Regulation Graphical Representation of Trade Marks Colour Marks Absolute Grounds for Refusal Invalidity of Trade Marks

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Parties

Glaxo Wellcome UK Ltd (t/a Allen & Hanburys)

Claimant/appellant

Glaxo Group Ltd

Claimant/appellant

Sandoz Ltd

Defendant/respondent

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From Summary Judgment in High Court

Legal Issues

  1. 1 Whether the EU trade mark for a combination of colours applied to inhalers is invalid for lack of clarity, precision, and unambiguous subject matter under Article 4 EUTMR
  2. 2 Whether the graphical representation (including pictorial and verbal description) of the trade mark meets the requirements for registration

Ratio Decidendi

The trade mark registration was invalid because the combination of the pictorial representation and the verbal description did not define the subject matter of protection with sufficient clarity, precision, and unambiguity as required by Article 4 EUTMR. The mark could take multiple forms and arrangements, leaving the public and authorities uncertain as to its scope. Both the pictorial and verbal elements must be considered together, and here, their lack of congruence rendered the mark invalid.

Court Disposition

Appeal dismissed; summary judgment for respondent upheld; trade mark declared invalid.

Orders

  • Trade mark declared invalid under Article 4 EUTMR.
  • Claim for infringement dismissed.