How elements of colour might save life sciences shape mark applications

Absolut’s appeal

The Board of Appeal reached its decision in proceedings involving the drinks manufacturer Absolut, which had its initial application to register a shape mark for one of its bottles rejected by the EUIPO trade mark examiner. The Board of Appeal overturned the decision, ruling that although the bottle’s structure and proportions did “not stand out” from other products in the market, its colour elements departed significantly from the available norms.

The Board of Appeal’s decision indicates that adding elements of colour to a shape could help an otherwise non-distinctive shape proceed to registration on the basis of inherent distinctiveness. It also demonstrates that, while a single colour is normally not distinctive, an application for a colour mark could be successful where shades and nuances cover a significant – and clearly defined – part of the product applied for.

Implications for life sciences

Both colour marks and 3D shape marks can be more challenging to register than traditional marks, making the Board of Appeal’s decision combining colour as applied to a 3D shape very interesting. Despite this, the applicability of the decision to successful protection of class 5 and 10 pharmaceutical and medtech products is uncertain. Glaxo Group Ltd fought for many years to protect the colour purple in classes 5 and 10 – for the shade used on its Seretide asthma inhalers. Its battle with the EUIPO concluded with a decision of the General Court in September 2020.

The court found not only that the colour, as applied for, lacked inherent distinctiveness – but also that it is not in the public interest for colours to be monopolised in the context of the goods applied for. This public interest point was reiterated the 2019 judgment in Glaxo Wellcome UK Ltd v Sandoz Ltd, which found that the public see a colour on an inhaler as indicating the purpose of the product – such as the strength of medicine and/or what it treats – rather than as a badge of origin.

It remains to be seen whether an attempt to register colour in conjunction with a 3D shape mark as an EUTM would be successful in classes 5 and 10. The Absolut decision is, therefore, instructive for those seeking protection for a new product in a bottle or other packaging that has not been on the market long enough to support an argument that it has acquired distinctiveness through use. However, the public interest argument surrounding colour presents a cautionary note that the life sciences sector should bear in mind.