A judgement in the Abbott v Sinocare [2025] EWHC 206 (Ch) case was handed down by the UK High Court earlier this year. The case dealt with issues around the validity of a 3D shape mark for a glucose monitoring system, and the possible infringement of this registration by competitors using a similar shaped product.
Background
The Claimant, Abbott Diabetes Care Inc. (Abbott), had registered the below 3D shape mark in the UK. The mark represented Abbott’s on-body unit (OBU) of its continuous glucose monitoring (CGM) system.
(Abbott’s registration)
The Defendant, Sinocare Inc, Sinocare Meditech Inc and Sannuo Health Management Co Ltd (together, Sinocare), launched its own CGM system in the UK in January 2024 named the iCani3 CGM system, as shown below:
(Sinocare’s iCani3 product)
Following the launch, Abbott claimed trade mark infringement and passing off by Sinocare on the basis of the use of its iCan i3 CGM system. Sinocare counterclaimed that Abbott’s registration was invalid as it lacked distinctiveness and because the shape was necessary to obtain a technical function.
Validity of Abbott’s mark – i) non-distinctiveness claim
At trial, Abbott claimed that its mark had acquired distinctiveness through its use in the UK since 2014. Abbott filed a large amount of evidence (including some filed at the time of the application to overcome the initial Registry objection, as well as new evidence for these proceedings). It was noted that there were other CGM’s on the UK market, but Abbott’s had previously been the only one to use a round shape.
The evidence filed showed that Abbott were the market leaders, and there had been over 25 million units sold in the UK up to the end of 2023. In addition, there had been significant advertising and marketing of the Abbott product, with the marketing spend amounting to over $50 million. Abbott also filed two surveys, but these were criticized and not given much weight.
Overall, the Court held that, although there had been significant advertising and marketing of the Abbott product in the UK, the focus of this marketing was on the functional aspects of the mark, rather than educating the public that the shape was a badge of origin.
Moreover, the Court considered that the “traditional” trade marks, which were also used on the product (i.e. the word and logo marks), “carried the burden of badge of origin”. For these reasons, it was held that the mark had not acquired distinctiveness through its use.
Validity of Abbott’s mark – ii) technical function claim
Sinocare had also claimed that Abbott’s mark was invalid as it consists exclusively of a shape which is necessary to obtain a technical result (under s.3(2)(b) of the TMA 1994).
The Court considered the essential characteristics of the mark, and identified six different features:
After hearing evidence from both sides, the Court held that features 1, 3, 4 and 6 all performed a technical function. Features 2 and 5 were ultimately not held to be essential characteristics, and so the overall decision was that the mark consisted exclusively of a shape necessary to obtain a technical result.
Therefore, Abbott’s registration was held to be invalid on the basis of this ground too.
Infringement claim
Although the registration was deemed to be invalid for the above reasons, the Court still considered the infringement claim (in case the decision on validity was overturned).
The Court held that even if the mark was valid, the claim of infringement would still have failed as it was deemed that there would be no likelihood of confusion between the marks. This was based partly on the fact that the shape marks were always presented in conjunction with other trade marks, such as the brand name and logo. It was also noted by the Court that there had been no evidence of actual confusion provided by Abbott, and the real-world evidence that was produced appeared to appreciate the different origins of Abbott and Sinocare products, rather than indicate confusion.
Further, the Court held that there was no risk of damage or unfair advantage, rather it was considered that Abbott had a concern regarding Sinocare’s legitimate entry into the market. On the same rationale, the claim of passing off also failed.
Conclusion
In summary, the Abbott’s registration was held to be invalid due to a lack of distinctives, as well as the fact that it consisted of a shape necessary to obtain a technical function. Even if the registration was valid, the Court still held that there would have been no infringement due to a lack of confusion and no risk of damage or unfair advantage.
This case is a reminder that shape marks are notoriously difficult to register and defend, and brands need to be careful if they are going to use them as a basis for challenging competitors.
It also serves as a reminder that it can be hard to argue that shape marks are badges of origin when used alongside “traditional” trade marks, as the public has not been educated to see shapes as trade origins. If brands want to have success in proving their shape marks have acquired distinctiveness, the marketing and advertising materials should focus on educating the public that the shape of the product is origin defining, and not just a technical feature of the product.