Glaxo Group Ltd's Trade Mark

Date

4 May 2000

Legislation

Trade Marks Act 1994 ss.3, 47, 72

Keywords

application for invalidity; absolute grounds for refusal; colour marks

Counsel

Anna Carboni, Sally Field

Solicitors:

Linklaters; Bristows

Judge:

A James

Court:

Trade Marks Registry

Reported:

[2001] ETMR 9

Summary:

Riker Laboratories Inc. ('Riker') applied to revoke Glaxo Group Ltd's ('Glaxo') registered trademark in respect of goods in Class 5. The mark consisted of the colours maroon and pink in respect of inhalers. The application was brought on the grounds that the mark was registered in breach of s. 3(1)(a), (b), (c) and (d) of the Trade Marks Act 1994 on the basis that the mark had not acquired distinctive character through use made before the date of the application; that the mark had not acquired distinctive character through use made after the date of the application; and that the mark had been registered in breach of public policy (s. 3(3)(a)).

Decision:

It was held that the mark was invalid and would be removed from the Register accordingly.

Under s.72 of the Act, registration was prima facie evidence of validity, therefore the onus was on the applicant to prove invalidity of the mark. Although there was some confusion about the colour coding of inhalers, R had failed to identify any public policy on inhaler devices, which the trade mark registration offended. Introduction of such a policy was the responsibility of the Department of Health and not the Registrar. As a result the objection under s.3(3)(a) failed. On the evidence the objection under s.3(3)(d) also failed - the colour pink when applied to inhalers did not indicate a stronger than usual dosage.

Further, the colours maroon and pink for inhalers did not have an inherently distinctive character. It was possible for the addition of an unusual colour to a product to be regarded as a capricious addition to the goods, which would qualify for trademark protection, but this was not so in the present case.

In considering questions of validity, it was necessary to determine whether the proprietor satisfied the proviso to s. 3(1). There was nothing to suggest that the registered proprietor had used the colours in an overtly trademark manner before the date of application. There was nothing in the promotional material like an exhortation to 'look for one in the maroon tube'. The proprietor's case was worse at a later date, after the date of registration. Other traders had started using similar colours for an identical product.