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Glaxo Wellcome UK Ltd v. Sandoz Ltd [2017] EWCA Civ 335

Case Summary  |  Judgment  |  10 May 2017

 

This appeal is in a large scale action for Trade Mark infringement and passing off brought by Glaxo against Sandoz in relation to respiratory inhalers. The UK action forms part of a series of international disputes concerning these pharmaceutical products. Glaxo owns an EU colour per se trade mark which is visually represented by a photograph of an inhaler in two shades of purple. Glaxo alleged trade mark infringement of this mark and passing off in relation to its Seretide Acuhaler inhalers as against Sandoz and its recently launched competing Airflusal Forspiro inhaler. Sandoz counterclaimed for invalidity of the Glaxo colour per se mark, and were granted summary judgment by HHJ Hacon sitting as a Judge of the High Court. Glaxo’s appeal against the finding of invalidity was dismissed, the Court of Appeal (Kitchin LJ) holding that the EUTM registration did not define the sign to which it related with sufficient clarity, and on one interpretation related not to a single sign but to a multiplicity or class of different signs and its registration was therefore in contravention of Arts 4 and 7(1)(a) of the EU Trade Mark Regulation. Glaxo intend to apply to the Supreme Court for permission to appeal.

Martin Howe QC and Iona Berkeley appeared for Sandoz the Defendants/Counterclaimants.