Chapter excerpt from the ebook MedTech IP: Lessons and Strategies for Success - view all chapters here.
A trade mark can be the most valuable asset of a business. When most people think of a trade mark they typically think of a word or a logo. But trade mark protection is not limited to words and logos. Protection can be obtained for shape, colour, motion, sounds, smells, tastes or even the texture of a product.
The ability to obtain trade mark protection for the shape and colour of distinctive products is of particular interest to the MedTech industry, where the shape and colour of medical devices is often of particular value.
Patents usually last for 20 years and registered designs for 25 years. Trade marks, on the other hand, have the potential to last forever and to provide the owner with monopoly protection of unlimited duration. For this reason, the value of a trade mark should not be underestimated, given the potential to protect the defining features of a product (for example, a distinctive shape or colour combination), long after patent or design rights have expired.
Indeed, we start below by looking at a trade mark which is still providing valuable protection more than 130 years after the original idea for the product, before looking at some examples of trade mark protection for the shapes and colours of products in the MedTech industry...
On May 8, 1886. Dr. John Pemberton, a local pharmacist in Atlanta, Georgia, USA produced a new syrup and carried a jug of the new product down the street to Jacobs' Pharmacy, where it was sampled, pronounced "excellent" and placed on sale for five cents a glass. During the first year, sales averaged a modest nine drinks per day.
The syrup’s formula contained coca leaf extract and caffeine from the kola nut. Thinking that "the two Cs would work well in advertising," Dr. Pemberton's partner and bookkeeper, Frank M. Robinson, suggested changing "kola" to "cola", and penned the now famous trade mark "Coca Cola" in his unique, flowing Spencerian script lettering, with fanciful curls for the Cs.
Today there are a staggering 1.9 billion servings of Coca-Cola per day across 200 countries. As of December 2023 Coca-Cola had a market capitalisation of US $254.34 Billion, making Coca-Cola the world's 38th most valuable company by market capitalisation.
Central and crucial to this success story has been the Coca-Cola trademark. A trade mark for Frank Robinson's flowing script version of Coca-Cola was granted in 1893. There have been various iterations of the logo since 1893, but it still remains similar to the original trade mark. According to Statista, in 2023 Coca-Cola’s brand was valued at US $106.1 billion, placing Coca-Cola within the top 10 most valuable global brands.
Whilst many people are aware of the value of the Coca-Cola logo, fewer people are aware that Coca-Cola has been successful in registering the shape of Coca-Cola bottle as a trade mark.
The famous shape of the glass bottle was created in 1915. At the time bottlers worried that a straight-sided bottle wasn’t distinctive enough and that Coca Cola was becoming easily confused with ‘copycat’ brands. Glass manufacturers were approached to come up with a unique bottle design for Coca Cola, which was introduced in 1916.
In 1960 a bottle with the word ‘Coca‑Cola’ written on it received its first trade mark from the US Patent and Trademark Office. In 1977 the Coca‑Cola bottle was granted a second trade mark for the contour shape itself, with no words written on it.
The ability to obtain trade mark protection for the shape of distinctive products is of particular interest to the MedTech industry, where the shape of medical devices is often of particular value, as we shall also consider in the next chapter on registered designs.
Whilst it has been possible to register a 3D shape or colour as a trade mark for many years now, the updates to the EU Trade Mark legislation in October 2017 (implemented into UK law in 2019) widened the scope of what is capable of being registered as a trade mark and has made it (in theory) easier than ever for brand owners to seek a monopoly over ‘non-conventional’ trade marks, such as motion marks, sounds, smells, tastes or even the texture of a product.
Amongst other things, the new legislation removed the requirement for a sign to be ‘graphically represented’ and replaced this with the requirement that a trade mark must be ‘represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor’. This change has had an impact on the types of trade marks that can be applied for and has resulted in some very interesting developments in case law.
Patents usually last for 20 years and registered designs for 25 years. Trade marks, on the other hand, have the potential to last forever and to provide the owner with monopoly protection of unlimited duration. For this reason, the value of a trade mark should not be underestimated, as seen from the example of Coca-Cola above, given the potential to protect the defining features of a product (for example, a distinctive shape or colour combination), long after patent or design rights have expired. In addition, trade marks are usually somewhat quicker and cheaper to register, compared to patents.
The value of a trade mark is something that consumer healthcare giant, GSK, are well versed in, and their trade mark successes and failures have been well documented in the news. Over the years, GSK have registered (or attempted to register) a range of non-conventional trade marks for their products, including the two-tone colour combination for their asthma inhaler (the various views of which, as filed in their EUTM application, are shown below).
Whilst this registration isn’t quite over the line yet (currently it is with the EU Board of Appeal following a Declaration of Invalidity filed against it by a third party), securing (and maintaining) registration of this colour mark would be a great asset to GSK – being able to potentially enforce their rights against others in the industry using this colour combination on goods covered by the mark.
One of the trade mark registrations that GSK have managed to secure is the following shape of a circular asthma inhaler. Below are the views of the product submitted in the trade mark application:
This mark was applied for on 21 August 2012 and achieved registration in October 2014 – so, fairly quickly for a 3D shape mark. That said, it has faced some obstacles in its route to registration, though thankfully for GSK, none of these was insurmountable.
After the filing of this application in August 2012, it met with objection under Articles 7(1)(b) of the EUTMR on the basis that it was considered to be non-distinctive (thus unable to perform the essential function of a trade mark – i.e. to identify the commercial origin of the goods / services and enable the consumer to repeat the experience if it is a positive one). The EUIPO went on to state that the features of the above depicted mark are ‘not markedly different’ from other shaped inhalers on the market. On this basis, the mark was refused in its entirety on the basis that it “cannot be sufficiently distinguished from other shapes commonly used for medical apparatus and instruments, inhalers, parts and fittings” and “will not enable the relevant public immediately and with certainty to distinguish the applicant / holder’s goods from those of another commercial origin”. This sort of objection is common, especially for 3D shape marks and, generally speaking, only shape marks which are considered to ‘depart significantly from the norm’ are considered to meet the threshold for registrability. This is partly because it is thought that consumers are not necessarily accustomed to seeing the shape of a mark as particularly ‘origin-identifying’ and instead are more likely to look to the brand name or logo to guarantee origin.
That said, GSK were determined to lock in registration of this shape mark and in October 2012, they filed a response to this objection. In their arguments they set out the unique nature of the shape in the field, and explained that no competitors were using anything the same or similar for such goods. The submissions went on to analyse each component part of the shape mark (the overall shape; the wave design, bisecting the device through the centre; the circle of top of the device; the mouthpiece; the slider; and the prongs) and the argument put forward was that the “functional components” of the device, i.e. the mouthpiece, slider, etc., are less likely to be paid attention to by the consumer, and are more likely to be taken for granted. Therefore, other elements of the device are likely to be given more weight, i.e. the unusual overall shape of the device, which they argued created a different overall impression and “departed from the norm” and therefore, should be considered sufficiently distinctive to achieve registration. Various examples of other branded inhalers were submitted as evidence to support these arguments, as well as extensive evidence of acquired distinctiveness.
Whilst the observations were taken into account, the objections raised were upheld and GSK filed an appeal against the refusals on both grounds. Ultimately, the decision against the representations of the marks contained in the application was annulled, however, the distinctiveness portion of the objection was maintained, and subsequently appealed to the Second Board of Appeal, where the objection was dismissed and the application allowed to proceed.
Whilst the written arguments that were filed (i.e. that the mark contained a combination of functional and non-functional elements and possessed at least the minimal amount of distinctiveness to achieve registration) may have assisted to get the mark though to registration, undoubtedly it was the large volume of evidence filed to demonstrate acquired distinctiveness of the mark that was pivotal in the allowance of this mark. Examples of evidence filed is set out below:
- Details of the launch date of the inhaler in each member state of the EU.
- Sale and advertising figures.
- An image of the one brilliant inhaler.
- Witness Statement from the Applicant setting out sales and market share information.
- Sales figures for Europe in units and monetary value.
- Awards in relation to the unique and innovative design of the inhaler.
- Marketing materials.
- Examples of packaging.
- Information leaflets including information on distribution.
- Survey evidence.
So the mark achieved registration and all was well until 2020 and 2021 when the validity of this registration was challenged, though in both cases the invalidity actions were withdrawn (leaving it open to question whether a settlement may have ultimately been agreed between the parties). The invalidity actions demonstrate the value of holding a shape mark registration, which could be licenced to third parties for use on products.
Overall, this story demonstrates the value of trade marks and the holistic approach that needs to be taken when planning an IP strategy, involving different types of IP where necessary. Trade mark protection should not be left solely for a brand name or logo, and can be an invaluable and long term way of protecting a product's shape and overall impression. As we saw from the example of Coca-Cola, a trade mark can still be providing extremely valuable protection more than 130 years after the original idea for the product!
