Abbott v Sinocare: 3D mark for glucose sensor invalid

3D trade marks that do not feature another trade mark on them often have a tough time before registries and courts in Europe. This is because case law requires that to benefit from the temporally unlimited protection a trade mark brings, the shape itself must indicate origin.

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:

Validity

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

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.

Conclusions on distinctiveness

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.

Necessary to obtain a technical result…

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.

Infringement

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].

Use of a non-distinctive sign defence

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).

Comment

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.