Abbott v Sinocare: 3D mark for glucose sensor invalid

The judgment in Abbott v Sinocare [2025] EWHC 206 (Ch), handed down earlier this
month, demonstrates this difficulty, and the attempt to use shape marks to
protect against similar products. The dispute related to the following products
(with Abbott’s trade mark on the left and the Defendants’ iCan i3 product on
the right:

While Abbott initially pleaded that its mark was inherently
distinctive, it took a more realistic approach by trial that the mark had
acquired distinctiveness rather than being inherently distinctive. Sinocare
counterclaimed seeking the invalidity of the mark on grounds of lack of distinctiveness
[s.3(1)(b), Trade Marks Act 1994 (TMA)] and the shape being necessary to obtain
a technical result [s.3(2)(b)]. Sinocare also relied on the shape giving
substantial value to the goods [s.3(2)(c)], but did not pursue that ground at
trial.

There was no dispute about the average consumer comprising
of healthcare professionals (HCPs), diabetics, carers for diabetics, and
members of the public who monitor glucose levels for health or fitness purposes.
These consumer groups have a high degree of knowledge and/or level of
attention.

Evidence to overcome a distinctiveness challenge (or
objection during prosecution) based on acquired distinctiveness is often
extensive. It does not need to include use of the mark on its own, although
that evidence is valuable; it simply needs to evidence that the average consumer
has come to perceive that goods supplied under the mark (or in a shape mark
case, having that shape) come from a particular undertaking, i.e. the use must
prove that the mark has become an indicator of origin. In one of his
characteristic critiques of EU trade mark law, Sir Robin Jacob commented in Nestlé that
the evidence used to prove distinctiveness sometimes involves a “sleight of
hand” where the proprietor advertises and sells a product having a particular
appearance with a distinctive trade mark, and then seeks registration based on
that use for the appearance minus the trade mark.

Abbott had overcome an objection by the UKIPO Hearing
Officer to get the mark registered in 2022. That evidence included the volume
of sales, Abbott’s market share, and extensive advertising. Abbott also relied
on two surveys conducted by a renowned survey expert, Philip Malivoire, created
for the purposes of the application for registration, although Mr Malivoire was
not brought as a witness for various reasons. A large amount of further
evidence in support of the claim that distinctiveness had been acquired by the date
of the counterclaim was also presented.

The surveys, and Sinocare’s criticisms of them, take up a
large proportion of the judgment. Nothing appears to have changed
as a result of this judgment. Fundamentally, the criticisms made of the surveys
were that they failed to comply with the ‘Whitford Guidelines’, which reflect
the “circumspect approach of the Court to survey evidence”.
The judge agreed that the surveys failed to comply with at least some of those
guidelines (including lack of disclosure of the details and circumstances of
the survey). The absence of Mr Malivoire, which the judge described as “never
satisfactorily explained”, was plainly on the judge’s mind.

The judge found Abbott’s evidence wanting, finding that Abbott’s
“traditional trade marks [carried] the burden of badge of origin”.
This shows the difficulty in provind acquired distinctiveness when the
materials evidencing the education of the consumer feature, heavily and
prominently, more traditional word and device marks.

The mark depicted an inherently functional product. The
product, which needed to be as small and unobtrusive as possible, while still
meeting technical requirements of being a sensor and not being easily knocked
off or caught on things, limited the creative freedom available to the designers.
Apologies for using copyright language, but I think it is apposite. While the
judge accepted that there were other ways of achieving the same result, and
some features were not necessary, he concluded that the Mark consists
exclusively of the shape of goods which is necessary to obtain a technical
result, and was therefore invalid.

In case the decisions on validity are overturned, the judge
went on to consider infringement. Much of the discussion in the judgment is about
the relevant legal tests, although the issue of ‘context’ (which is one of the
issues of the day in trade mark law in the UK at the moment, and will be
considered by the Supreme Court in Iconix in March).

On the likelihood of confusion claim [s.10(2) TMA], the
court relied on the characteristics of the average consumer, and the fact that
they would likely “do their homework” and found no likelihood of
confusion.

Given the judge’s findings that the mark was invalid, his conclusions
on s.10(3) are perhaps unsurprising. Despite some effort to find the judge’s
finding on whether or not the mark had a reputation, I can’t find it. That
appears to be the result of a concession by the defendants that if the mark is
valid there would be a link (see [244]). Nevertheless, the judge found that
there was no likelihood of damage to the mark on the evidence – any damage
would relate to the market entry of Sinocare’s product, not its appearance
[270].

As a further line of defence, Sinocare relied on s.11(2)(b)
(i.e. use of a non-distinctive sign in accordance with honest commercial
practices). The fact that Sinocare’s device was a non-distinctive sign was
accepted for much the same reasons that Abbott’s mark was found to be not distinctive.
The main battleground was on honest commercial practices, and the judge was
persuaded that Sinocare acted fairly in relation to Abbott’s rights (if they
had been valid).

As is often the case, this judgment is a useful reminder of both
the legal tests for validity and the legal-procedural requirements for adducing
survey evidence in UK litigation. Practitioners will do well to look at the
analysis of the evidence attempting to show acquired distinctiveness and where
it fell down.

One further point is that the judge seems to have been
mindful that the products in question were fairly straightforward designs for
important health devices over which there appears not to be a patent or design
right being infringed.