On 7 February 2025, the High Court handed down its judgment in Abbott v Sinocare [2025] EWHC 206 (Ch). The case concerned a trade mark and passing off action brought by US company Abbott Diabetes Care Inc. (“Abbott”) against three defendants registered variously in China and the US (collectively, “Sinocare”). Sinocare counterclaimed that Abbott’s trade mark registration, upon which the latter’s infringement case relied, was invalid.

Background and key issues

The case is of particular interest as Abbott’s registration was a three-dimensional shape mark, representing the ‘on-body unit’ of Abbott’s continuous glucose monitoring systems. These are used by diabetes patients, and to some extent the general wellness market. The mark was registered under no. 3779922, and in relation to “Sensor-based glucose monitors; continuous glucose monitoring systems” in class 10. The depictions of the mark are shown below:

The mark was registered in 2022 on the basis that it had acquired distinctive character through use.

Abbott relied upon this registration to bring infringement proceedings against Sinocare in relation to its use of its continuous glucose monitoring systems, which were alleged to infringe the Abbott 3-D mark shown above.

In response, Sinocare’s counterclaim was that the mark was invalid for registration as it fell foul of the absolute grounds for registrability set out under Sections 3(1)(b) and 3(2)(b) of the Trade Marks Act. These sub sections read as follows:

3(1) The following shall not be registered

             (b) trade marks which are devoid of any distinctive character

             …

3(2) A sign shall not be registered as a trade mark if it consists exclusively of –

             (b) the shape, or another characteristic, of goods which is necessary to obtain a technical result…

Invalidity counterclaim – Assessing shape marks

In deciding the case, Mr Justice Smith took the invalidity counterclaim first, as if the registration was invalid then Abbott would have no infringement case.

The principle that distinctive character is assessed the same regardless of the type of mark (eg. 3D, word, or any other type) was restated. However, the judge also stated that the perception of the relevant public is not necessarily the same for a 3-D mark consisting of the shape of a product as it would be for a word mark which is independent from the appearance of the product it denotes – because the average consumer is not in the habit of making assumptions about the origin of products based on their shape in the absence of any word or graphic element.

The court reminded itself that distinctive character must be based on an overall assessment taking account of all the evidence and circumstances, and having regard to the relevant class of persons (in this case, healthcare professionals, diabetes patients and general wellness-conscious users of continuous glucose monitoring systems) that is, the consumers who are likely to use the goods or services in question.

The hurdle which an inherently non-distinctive shape mark must overcome to acquire distinctive character, originally set out by Jacob J (as he then was) in Société des Produits Nestlé SA v Unilever Plc [2002] was also re-stated. The passage is worth reproducing here to highlight the extent of the difficulty:

“There is a bit of sleight of hand going on here and in other cases of this sort.  The trick works like this.  The manufacturer sells and advertises his product widely and under a well-known trade mark.  After some while the product appearance becomes well-known.  He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so.  He then gets registration of the shape alone.  Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.

I do not think that is what the European Trade Mark system is for.  It is a system about trade marks, badges of trade origin.  For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer.  It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods.  If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.”

With these difficulties in mind, and after a review of the relevant evidence (more on which below), Mr Justice Smith turned to consideration of whether the essential characteristics of the mark perform a technical function. The essential characteristics were deemed to be: the flat, circular shape; the thin circular translucent adhesive area; the smooth texture and curved edges; and the central cogwheel with a hole in it at the centre of the device.

Mr Justice Smith found that all of these essential characteristics consist exclusively of the shape of goods necessary to obtain a technical result. The mark therefore falls foul of Section 3(2)(b) and 3(1)(b) of the Act, and the registration is invalid.

Survey evidence

Abbott relied extensively on a number of surveys in support of its argument that the registration was valid due to the mark having acquired distinctiveness. These were in turn criticised by Sinocare.

In delivering his opinion on the value of the survey evidence, the Judge turned to the ‘Whitford Guidelines’ which form the basis of the court’s assessment of surveys. These are helpfully re-stated in para 129 of the judgment:

• if a survey is to have any validity at all, the way in which the interviewees are selected must be established as being done by a method such that a relevant cross-section of the public is interviewed;
• any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis;
• the party relying on the survey must give the fullest possible disclosure of exactly how many surveys they have carried out, exactly how those surveys were conducted and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents;
• the questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put;
• exact answers and not some sort of abbreviation or digest of the exact answer must be recorded;
• the totality of all answers given to all surveys should be disclosed; and
• the instructions given to interviewers must also be disclosed.

The surveys put forward by Abbott were generally deemed to fall foul of at least some of the Whitford Guidelines, and the survey evidence appears to have had little effect on the judge’s decision-making.

Similarity of marks

Despite the finding that Abbott’s registration was invalid, the judge went on to assess their infringement case in the event that he was wrong on invalidity. Abbott’s infringement grounds were Section 10(2)(b) and 10(3), which are as follows:

10(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because –

                             (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the mark is registered

There exists a likelihood of confusion on the part of the public

10(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which –

• is identical with or similar to the trade mark,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

For the Section 10(2) likelihood of confusion case, the Judge found that the average consumer of continuous glucose monitoring systems would pay a high degree of attention and be capable of differentiating the different origins and characteristics of such systems on the market. Indeed, online reviews of the systems offered evidence of consumers behaving in a way that suggested there was no likelihood of confusion. The Section 10(2) case would therefore have failed even if the registration had been valid.

As for the Section 10(3) claim, Abbott did not succeed in convincing the Judge that any change in the economic behaviour of consumers would take place – and therefore that no damage or ‘harm’ would be suffered by Abbott as a result of Sinocare’s use of their signs. The Section 10(3) infringement case would therefore not have succeeded either, had the registration been valid.

A point made strongly by the Judge in the assessment of infringement was the position that Abbott’s mark would usually be viewed alongside a more conventional word mark – and that the word mark would be understood as the badge of origin rather than the 3-D shape mark. Whilst the facts of the two cases are different, one might draw a distinction between this decision and that of the Court of Appeal in the recent Thatchers v Aldi case, [2025] EWCA Civ 5. In Thatchers, the case revolved around the similarity of packaging used on cider by Thatchers and Aldi, which both consisted of depictions of lemons and other similar get-up, along with a word mark (‘Thatchers’ and ‘Taurus’ respectively).

In Thatchers, unlike in Abbott v Sinocare, the distinctive character of the words was treated as secondary relative to the rest of the get-up of the signs as a whole, and the finding was of a likelihood of confusion, and therefore infringement.

Summary

The Abbott decision emphasises the difficulty that trade mark owners continue to face in protecting and enforcing non-conventional trade marks in the UK. Showing that a shape mark distinguishes the origin of goods in its own right is crucial in convincing the UKIPO that a shape mark should be validly registered – and the evidential burden to do so is set at a very high level.

If you are interested in protecting a non-conventional mark in the UK but are concerned about how to do so then please do speak to one of Wilson Gunn’s trade mark attorneys for advice.