Abbott v Sinocare – 3D Marks and Invalidity

The High Court has ruled in favour of Sinocare (the “Defendant”) in relation to Abbott Diabetes Care Inc’s (the “Claimant”) action for Section 10(2)(b) and Section S10 (3) trade mark infringement against the Defendant in relation to the use of the Claimant’s 3-D trade mark for sensor glucose monitors.

Importantly, Mr Justice Smith demonstrated the difficulty of using a shape mark to enforce against similar products by affirming that the 3-D mark failed to meet the requirements for enhanced distinctiveness and that the shape features consisted of features with a technical function.

Enhanced Distinctiveness

The Defendant’s counterclaim for invalidity on the grounds that the shape mark was non-distinctive was affirmed, despite the Claimant having overcome a UKIPO objection to get the mark registered by including evidence of volume of sales and substantial advertising. Mr Justice Smith held that the evidence submitted failed to comply with the ‘Whitford Guidelines’ as there were insufficient details set out in the survey. Further, as the survey evidence prominently featured the word marks of the Claimant, it was difficult for the Claimant to prove acquired distinctiveness in the shape mark.

Technical Function

Mr Justice Smith held that the shape mark was inherently depicting a functional product, as it was required to meet the technical requirements of a sensor, i.e., it must be small and therefore there was not much room for design freedom.

Trade Mark Infringement

The issue of section 10 (2) infringement wads considered, and the average consumer was deemed to have a high level of attention. On this basis, it was held that there would be no likelihood of confusion. Given that it was held that the shape mark did not have the requisite distinctiveness, the section 10 (3) claim was also dismissed.

Briffa comment

The case is interesting from a legal perspective, as it makes clear that use of a shape mark is unlikely to have the requisite distinctness to withstand a counterclaim for invalidity for the same. It also makes clear that compliance with the procedural tests for survey evidence must be followed.

The litigation landscape for trade marks is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the trade mark litigation space for over 25 years.