Trade mark proceedings can often feel like never-ending stories. In this case, Glaxo Group Ltd. (Glaxo) aimed to prove the distinctiveness of a 3D mark for an inhaler. After multiple decisions from the European Union Intellectual Property Office (EUIPO) Board of Appeal and the European Union General Court, the Board of Appeal cancelled the trade mark, addressing previous faults. This may not be the final episode, but we are likely nearing the end.
Background
On 16 December 2014, Cipla Europe NV (Cipla) filed an application for a declaration of invalidity with the EUIPO against Glaxo’s three-dimensional mark No. 002179562 for the sign:
(the contested trade mark)
The mark was filed on 12 April 2001 for various goods, including “inhalers”.
The Cancellation Division granted Cipla’s application on 16 September 2016, finding that the relevant public could perceive colours on inhalers as an indicator of the medicine contained therein. Based on this and considering that the market for these goods features inhalers in various colours, they held that the mark lacked distinctive character. Additionally, Glaxo failed to prove that the sign had acquired distinctiveness before its registration in 2001.
First Board of Appeal Decision
Glaxo appealed the decision to the Board of Appeal. The Board found that Cipla had not proven the mark lacked distinctiveness. However, they agreed that the colours, lilac and deep purple, have a technical and informative function for medical professionals and consumers. The Board of Appeal considered three key points:
- the relevant point in time for the cancellation proceedings;
- the perception of the contested trade mark at this point in time; and
- the ever-changing market realities in the pharmaceutical industry.
The Board of Appeal noted that the relevant point in time for assessing invalidity was the contested trade mark’s filing date, meaning that, to be cancelled, the trade mark must be non-distinctive at the time of filing, which, in this case, was 2001. Evidence from after this date may be considered if it allows conclusions to be drawn regarding the situation as it was at that time.
The Board of Appeal considered the targeted public’s perception of the sign in relation to the goods at issue at this point in time. They stated that the contested goods were products from the pharmaceutical industry, which is developing constantly, and that it is a “well-known fact that this sector changes permanently with new compositions, new packaging and new launches of products. Ten years or even longer periods are sufficiently long periods for changes in the perception of goods according to new trends and their constant evolution”. As a result, the Board of Appeal acknowledged the difficulty in relating information back in time. Given this difficulty, and because a large part of Cipla’s evidence related to countries outside of the EU, the Board of Appeal stated that “None of [the] documents allow for a reliable finding that the trade mark was devoid of distinctive character at the filing date”.
Although the Board of Appeal found that the evidence produced by Cipla was insufficient, they referred to a discussion before the Cancellation Division regarding the understanding of the relevant public concerning the colours used as defined in the description of the contested trade mark. From the submitted evidence, the Board of Appeal concluded that it was clear that asthma medicines are designed in different colours, with certain colours being descriptive of e. g. active ingredients, purposes, or characteristics of certain medicines. Cipla provided several undated examples of this practice from, for example, the UK National Health System (NHS) and the European Medicines Agency (EMA). When used in this way, colours can have a technical and informative function.
The Board of Appeal considered the principles established in the Shade of the colour purple decision (GC, judgement dated 9 September 2020, T-187/19, ECLI:EU:2020:405 – Glaxo Group v. EUIPO), which had been handed down nearly ten years after the relevant point in time, to be applicable to the case at hand. From this, they concluded that inhaler colours could be descriptive; these practices were inherent to the pharmaceutical market “in recent decades”.
Despite the original conclusion that none of the documents allowed for a finding that the trade mark was devoid of distinctive character at the filing date, these factors led the Board of Appeal to conclude that the contested trade mark was indeed devoid of distinctive character.
General Court Decision
Glaxo appealed the decision to the General Court on the grounds that:
- the Board of Appeal failed to provide adequate reasons; and
- the decision was contradictory, lacking specific evidence to rebut the presumption of the trade mark’s legality.
On 24 May 2023, the General Court upheld Glaxo’s appeal and revoked the Board of Appeal’s decision.
Under EU law, the Board of Appeal must provide adequate reasons for its decisions. For decisions in trade mark matters, this means laying out the reasoning behind a finding of non-distinctiveness. In cases of compound marks, such as the case at hand, it is settled case law that the distinctive character may be determined on the overall assessment of the marks.
In the case at hand, the Board of Appeal reached the same overall conclusion as the Cancellation Division, but for different reasons. Since the Board of Appeal deviated from the argumentation of the Cancellation Department, it should have conducted a new overall assessment of the inherent distinctiveness of the mark. The Board of Appeal did not conduct such an overall assessment, leading the General Court to conclude that the Board of Appeal failed to provide ample reasoning for its decision.
Additionally, Glaxo believed the Board of Appeal’s reasoning was contradictory, and the evidence referenced by the Board of Appeal was insufficient to support their conclusion. Moreover, the Board of Appeal generally erred in assessing the inherent distinctive character of the mark.
The EUIPO acknowledged that the Board of Appeal’s wording was contradictory, however, it stated that it was apparent from the Board of Appeal’s reasoning that it had considered the facts of the case, including the evolution of the consumer perception.
Upon review, the General Court found the Board of Appeal's grounds to be contradictory. The Contested Decision stated that the pharmaceutical industry evolves constantly, making it difficult to validate information from the time of the mark's registration. The Board of Appeal said there was no evidence to conclude the trade mark was non-distinctive and suggested that even with a lack of evidence, a different conclusion could be justified if there was sufficient evidence close to the relevant date, which they failed to identify or examine. Yet, the Board concluded the trade mark was non-distinctive based on undated evidence, failing to provide adequate reasons.
Moreover, the contested decision didn’t clarify why the principles set forth in ‘The shade of the colour of purple’ and declared by the Board of Appeal to be applicable were relevant to the case at hand. The relevant date in ‘The shade of the colour of purple’ was 24 September 2015, which was nearly 14 years later than the relevant date in the case at hand in 2001. This also constituted a failure to state reasons, since the parties and the Courts of the European Union could not determine whether Cipla had adequately demonstrated that the contested mark was devoid of distinctive character on the relevant date.
The Board of Appeal’s decision was annulled and, after Cipla’s unsuccessful appeal to the Court of Justice of the European Union, it was remitted to the Board of Appeal and reallocated to the Second Board of Appeal.
Second Board of Appeal Decision
The Second Board of Appeal rectified their previous decision, finding that the mark had neither inherent nor acquired distinctiveness, and this time providing more detailed grounds. They noted that the criteria for three-dimensional marks are similar to other trade marks. However, public perception differs because consumers do not usually associate product shapes with their origin. Only a mark that significantly departs from the norms or customs of the sector and fulfils its essential function of indicating origin would not be devoid of distinctive character under Article 7(1)(b) EUTMR.
The Board considered three key points to determine inherent distinctiveness: the relevant sector, the norms and customs of this sector, and whether the contested sign departed significantly from them.
The Board agreed that the relevant public included both medical professionals and pharmacists, as well as average consumers. They noted that the “boot-shaped” metered dose inhaler was widely available at the relevant time. This indicated that the shape of the contested sign did not significantly depart from the norms or customs of the inhaler sector.
The Board then examined the inherent distinctiveness of the colour combination. Although there was no official EU-wide convention on colour coding for inhalers at the relevant date, it was customary for inhalers to display different colours. The Board found that even in 2001, these colours indicated the active ingredients in the inhalers. Colours are generally ill-suited to convey precise information, and the colour purple would not typically be seen as an indication of origin. The use of two different shades of purple was not enough to make it distinctive, as it was common to see different coloured inhalers on the market. Therefore, it was unlikely that the colour of the product would determine consumer choice.
Overall, the Board found that the trade mark’s registration is a normal and traditional shape, and the colour purple is not sufficiently different from existing products. Thus, the sign does not significantly depart from the norms or customs of the inhaler sector at the relevant time and is devoid of distinctive character.
Glaxo’s attempt to prove acquired distinctiveness was also unsuccessful. They needed to show the mark had acquired distinctiveness based on use in all Member States at the time of filing. Since it wasn’t in use in all Member States, this wasn’t possible.
Glaxo could have proved that the mark had acquired distinctiveness at a later point in time, but the Board found the evidence inconclusive. It didn’t differentiate between “boot”-shaped and “disc”-shaped inhalers, nor did it show that the public would associate the shape mark with Glaxo as an indication of origin.
Glaxo submitted belated surveys indicating this might be the case in two (of fifteen relevant) Member States. However, the Board found that these results couldn’t be extrapolated to other EU Member States since sales were not conducted uniformly in all Member States.
All in all, the Board confirmed the Cancellation Division’s decision, and determined the mark should be cancelled.
Key Takeaways
Market behaviours and habits are constantly changing. Proving that a trade mark was inherently distinctive twenty years ago is no small undertaking and requires meticulous record-keeping. The same is true for acquired distinctiveness, where brand owners need to prove that a mark had become distinctive in relation to the goods or services for which it was registered. Nonetheless, in cases where the distinctiveness of a trade mark could become contentious, being able to prove either inherent or acquired distinctiveness can be key to retaining protection – even years later.
Glaxo can appeal the decision to the General Court again – we’ll have to see if they do, and if the never-ending story continues.
