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Case law: Trade mark registration can be declared invalid if description of mark is unclear

Owners of registered trade marks should ensure the description in their registrations are clear, precise, unambiguous and uniform, or risk the registrations being declared invalid.

Legal Alert

This update was published in Legal Alert - September 2016

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

A European Community trade mark registration included a description as follows: 'the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler'. The owner of the mark alleged that another business had infringed its mark.

The other business argued that the mark was not valid because the words 'significant proportion' meant the description could be applied to an almost infinite number of combinations of the two colours. It was therefore a description of an almost infinite number of trade marks, which was not permitted. This also meant that the mark was not capable of graphical representation, as required by trade mark law.

The owner said that the description was not of multiple trade marks but of multiple variations to one trade mark.

The court said EU law required European trade marks comprising colour combinations to be clear, precise, unambiguous and uniform. Minor variations were permitted, but they had to be so insignificant that the average consumer would not notice them.

In this case the description created a 'puzzle' for the average consumer, leaving them unclear what the registration covered. Particularly, the words 'significant proportion' meant the mark had no precise scope and it was therefore invalid.

Operative date

  • Now

Recommendations

  • Owners of registered trade marks should ensure the description in their registrations are clear, precise, unambiguous and uniform, or risk the registration being declared invalid

Case law: Glaxo v Sandoz [2016] EWHC 1537

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.