Abbott Diabetes Care v Sinocare [2025] EWHC 206

In Abbott v Sinocare, Mr Justice Smith has found Abbott’s three-dimensional trade mark to be invalid and not infringed. The judgment provides a useful summary on the law as it applies to three-dimensional trade marks, as well as the use of evidence such as surveys.

Court: Business & Property Courts, Chancery Division, England and Wales
Judge: Mr Justice Richard Smith
Judgment: Here
Trade Mark: UK3779922
Issue: Trade mark infringement and validity

Background

Abbott manufactures and sells a continuous glucose monitor, which works via an on-body unit, which inserts a small electrochemical sensor under the skin to measure glucose levels in the interstitial fluid around the cells. In December 2022, it registered a three-dimensional trade mark for its ‘on-body unit in class 10.

In April 2023, Sinocare introduced its own continuous glucose monitor, including an ‘on-body unit’. The following year, in February 2024, Abbott commenced proceedings, alleging trade mark infringement on the basis of s. 10(2)(b) and 10(3) of the Trade Marks Act 1994, as well as passing off.

In response, Sinocare denied infringement, advanced a defence under s.11(2)(b) of the Trade Marks Act 1994 and counterclaimed that the trade mark was invalid on the basis of, among others, s. 3(1)(b) and 3(2)(b).

Initially Abbott sought interim injunctive relief, but this was broadly declined by the Court following certain assurances from Sincocare. The claim went to trial some 8 months from issue, with judgment given some four months thereafter.

Decision

R. Smith J concluded that Abbott’s trade mark was invalid, holding that it lacked distinctive character and that some of its characteristics were necessary to obtain a technical result.

As to the former, Abbott relied on survey evidence as well as evidence of marketing, advertising and sales to show acquired distinctiveness. The judge concluded that found that this was insufficient to show that the average consumer understood the mark to connote origin. In so doing, he was critical of the surveys (as to which, please see below).

With regard to the latter, the judge concluded that characteristics such as the flat, circular shape, outer adhesive area, the smooth texture and curved edges and central cogwheel all performed a technical function.

In any event, he concluded that there was no likelihood of confusion, unfair advantage or detriment. In doing so, he noted that the level of attention from the average consumer would be high, given the nature of the medical device. He also observed that there was a lack of evidence of a change of the economic behaviour of the consumer.

Comment

Trade mark law is generally sceptical of three-dimensional marks, with the trade mark owner having to meet a high evidential burden to show acquired distinctiveness.

This is exacerbated in the UK, where it is long established that it is difficult to obtain permission for survey evidence before the English courts and, when permission is granted, the court will treat these surveys with scepticism.

In particular, the court judges the surveys against the Whitford guidelines,  first set out in Imperial v Philip Morris [1984] R.P.C. 293. In the case at hand, the court concluded that the survey evidence did not meet guideline 3, as there was a lack of information as to the source of the samples. It followed that it was not possible to establish whether the people surveyed were a representative sample or not.