Pictures alone cannot define how colour trade marks should be applied, rules Court of Appeal

The judgment is "important", intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said.

To be valid, trade marks must be capable of being represented graphically and also be capable of distinguishing the goods or services of one business from those of others. To satisfy those requirements trade mark owners often use illustrations and text descriptions to explain how their mark should apply.

In a recent ruling, the Court of Appeal rejected claims by a major pharmaceutical company that "the pictorial representation" of a mark of one or more colours can solely define "how the colour or colours are to be applied".

Lord Justice Kitchin said: "The verbal description of such a mark is also important and must be taken into account together with the pictorial representation. The graphical representation, comprising both the pictorial representation and the verbal description, must be considered as a whole."

"In the case of a sign consisting of one or more colours per se, the description is very important," he said.

The Court of Appeal's judgment was issued in an appeal brought by a business within the GlaxoSmithKline (GSK) group against an earlier ruling by the High Court, which had invalidated the company's EU trade mark and dismissed its claims of infringement by rival pharmaceuticals company Sandoz. 

GSK's mark consisted of two particular shades of purple, which GSK used for an inhaler product it manufactured for the treatment of asthma and chronic obstructive pulmonary disease. The company used pictures and words to describe how its mark applied.

In finding GSK's trade mark invalid, the High Court held that the mark was "not sufficiently precise and uniform ... nor … sufficiently clear and unambiguous" to accord with the requirements of EU trade mark law. The High Court judge identified differences between the visual representation of GSK's trade mark and the way it had been described in registration.

In rejecting GSK's appeal against that ruling, the Court of Appeal confirmed that businesses seeking a trade mark for a colour cannot file a sample of the colour on its own to meet the 'graphic representation' requirements of EU trade mark law.

Including such a sample alongside "a verbal description of those colours may constitute a graphic representation", however, "provided that the application for registration includes a systematic arrangement associating the colours in a predetermined and uniform way", the Court said.

In the ruling, Lord Justice Kitchin explained that the reason why graphic representation of a trade mark is required under EU trade mark law is to ensure "precision and clarity" over "the subject matter for which protection is sought or has been secured". To achieve that, "the sign must always be perceived unambiguously and uniformly", he said.

"A mark must always be perceived unambiguously if it is to fulfil its function as an indication of origin," the judge said. "Moreover, the authorities must refuse to register the sign if, upon opposition by the proprietor of an earlier trade mark, the sign is found to be identical to the earlier mark and if the products or services for which registration is sought are identical with those for which the earlier mark is protected. So also, upon opposition by the proprietor of an earlier trade mark, the authorities must refuse to register the sign where, by virtue of its identity or similarly with an earlier mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion."

"Similarly, the owner of a registered trade mark is entitled to prevent a third party from using a sign which is identical to his mark for goods or services which are identical to those for which the mark is protected. He can also prohibit the use of a sign where, by virtue of its identity or similarity with the mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion," he said.

In assessing GSK's trade mark in light of its findings, the Court of Appeal ruled that the trade mark "lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands".

Lord Justice Kitchin questioned whether the mark would be "perceived unambiguously and uniformly by the public", and said it also "offends against the principle of fairness because the uncertainty as to what the subject matter of the mark actually is gives [GSK] an unfair competitive advantage".

From October this year applications for EU trade marks will no longer need to be capable of being represented graphically to qualify for trade mark protection.

Iain Connor of Pinsent Masons said: "Notwithstanding the forthcoming change in the law, this is an important decision because even under the new regime applicants will do well to heed the lessons from this case and ensure that their proposed trade marks are precisely described with sufficient specificity so as to be intelligible to anyone accessing the trade mark register which will remain the primary record of the scope of the trade mark."