A decision of the High Court concerning the shape of continuous glucose monitoring (CGM) systems (Abbott v Sinocare) has underlined the challenges in establishing that a 3D trade mark has acquired distinctiveness. To be protected, it is necessary to point to the steps taken to educate the public that they should understand the mark not merely as a product, but as also having a meaning as an indicator of origin. In this case, the court concluded that Abbott's presentation of its mark was as a product, with the emphasis being on its functional aspects, and with its traditional trade marks (its word and figurative marks) "carrying the burden of badge of origin".
The court's judgment also underscores the potential difficulties in producing robust survey evidence, and the importance of adhering to relevant guidelines when collating such evidence. The court concluded that the most that could be said about Abbott's survey evidence was that some respondents recognised the mark. However, given the framing of the survey and the familiarity of Type 1 diabetics and their treatment providers with such devices, it was unsurprising that many named the market-leading product.
Background
A global leader in diabetes care, Abbott offers a range of circular on-body units for measuring glucose levels (CGM systems) including its 'FreeStyle Libre' product. In October 2020, Abbott filed for a three-dimensional trade mark depicting its CGM in class 10 for medical apparatus and instruments for diabetes management (among others) as follows:
Sinocare, a competitor for diabetes management products, introduced its on-body CGM unit, the iCan i3, in China in April 2023, before launching it in the UK in January 2024:
(the "iCan)
Abbott alleged infringement of its trade mark on the basis that Sinocare's use of the iCan would cause a likelihood of confusion and that its use would cause detriment to, or take unfair advantage of, the distinctive character or reputation of the trade mark.
Sinocare counterclaimed alleging that the mark was invalid as being devoid of distinctive character and that the shape was necessary to achieve a technical result.
Mr Justice Richard Smith held that Abbott's mark was invalid and, even if it had been valid, the infringement action would have failed (as did the claim in passing off). Separately, proceedings have also been commenced in Belgium, Germany and Austria.
Distinctive character
Whilst the trade mark was not inherently distinctive, the UKIPO had accepted that the mark had acquired distinctiveness and it had therefore proceeded to registration in 2022. Abbott relied before the court on a number of the same arguments as before the UKIPO (including relating to the significant success of its products, its marketing expenditure, and survey evidence as to acquired distinctiveness). It also argued that the mark was worn prominently on the body, thereby representing an increasingly important method of promotion of this kind of product (for example, former Prime Minister Theresa May had been photographed wearing her sensor).
However, the court found that Abbott's evidence failed to demonstrate that a significant proportion of the relevant consumers (being healthcare professionals, diabetics and their carers or wellness consumers), seeing the mark used in relation to the relevant goods, would perceive it as designating the goods of a particular undertaking. Abbott's first survey (of 258 healthcare professionals and 202 patients) had resulted in 51% of healthcare professionals and 43% of patients mentioning Abbott or one of its products when shown the mark. Its second survey (where 343 healthcare professionals and 206 patients were shown four devices, including the FreeStyle Libre) resulted in 78% of healthcare professionals and 86% of patients correctly identifying the FreeStyle Libre. Of these, 62% of healthcare professionals and 38% of patients referred to the circular shape as being something they used to recognise the FreeStyle Libre.
However, the court criticised this evidence for not complying with the Whitford Guidelines relating to survey evidence which, in summary, require that:
- interviewees must be selected in such a way that they represent a relevant cross section of the public;
- the survey must be of a size sufficient to produce relevant results on a statistical basis;
- the party relying on the survey must disclose how many surveys they conducted, how they were conducted and how many participants there were;
- the questions asked must not be leading and participants should not be directed into a field of speculation which they would not have embarked on had the question not been asked;
- exact answers must be recorded and all answers should be disclosed; and
- the instructions given to interviewers must be disclosed.
Asking respondents if they had heard of the Abbott's Freestyle product inevitably brought the product and brand to the forefront of the respondents' minds.
Smith J concluded that the survey evidence was unconvincing, noting that, whilst consumers recognised the trade mark as being a FreeStyle Libre or part of the FreeStyle Libre products, they did not perceive it as being indicative of Abbott and no other manufacturer. Recognition does not equate to distinctiveness, and the survey questions asked did not focus on the elements of the goods, including the shape, to enable distinctiveness to be properly explored.
Technical result
Abbott contended that the features of its on-body unit were not necessary to achieve a technical result and, even where they did achieve such a result, it could be achieved via other means.
Smith J, referencing Lego Juris A/S v OHIM, stated that the 'existence of other shapes which could achieve the same technical result does not exclude the ground of objection'. The court identified that the essential characteristics of the shape did perform a technical function (notwithstanding that these could be achieved by other means) and, as a result, the mark was also found invalid on this ground.
Infringement – likelihood of confusion
The court went on to consider infringement if its finding on invalidity was not correct. Sinocare accepted that the goods were identical and agreed there was visual similarity, but maintained that there was no likelihood of confusion. Abbott did not provide any evidence of actual confusion and instead relied on various scenarios where confusion could arise, including potentially in a post-sale context.
Smith J noted that there would be a high level of consumer attention due to the nature of the goods themselves, being medical devices inserted into the skin with a needle.
Further, Abbott's products and the iCan were likely to be covered by clothing when worn in public (Abbott's own surveys determined that 93.4% of users believed that their on-body unit could not be seen during use). Smith J concluded that it was more likely that the relevant consumer would see a two-dimensional image of an on-body unit in print form or online, which would almost invariably be accompanied by a traditional trade mark such as 'ABBOTT' or 'SINOCARE', thus eliminating any element of confusion as to the origin of the products.
Infringement – reputation: unfair advantage and detriment to distinctive character
Abbott asserted that Sinocare's use of the iCan would "destroy or severely damage'" the ability of its trade mark to denote products offered by Abbott, and that it would "piggyback" on the reputation it had built, thereby benefiting from the significant amount of money it had spent in promoting its products. Abbott also highlighted the dissimilar shape of other CGMs on the market, arguing that Sinocare's choice of shape and colour for its iCan was deliberate.
We have recently discussed the approach of the courts in relation to lookalike packaging and taking of unfair advantage in the case of Thatchers v Aldi. In that case, the Court of Appeal found that Aldi's product design was riding on the coat-tails of Thatchers' packaging trade mark. Here, however, Smith J noted the logical reasons for the design of Sinocare's product. For example, the circular shape was more practical for users and the white, opaque surface was chosen due to the unit being a medical device. Further, Abbott had not properly explained the harm it would suffer, its evidence reflecting "little more than a general concern about Sinocare's market entry".
Passing off
Finally, the passing off case was dealt with quickly. Whilst Abbott had goodwill in the UK, consumers did not identify that goodwill with the shape of Abbott's product. Further, consumers would not be deceived by the iCan and Abbott would not therefore suffer any damage as a result.
Comment
As this judgment demonstrates, shape marks continue to face particular challenges, though this will always be a fact-specific assessment. Where appropriate, a package of relevant protection including designs or patents (where applicable), as well as trade marks, should be considered.