any promotional material; and no reference is made to the shape of the product in Beecham's sales manual.
[13] Beecham's counter is that this approach reduces the inquiry as to whether a mark is a trade mark to a
subjective inquiry whereas it, properly, is an objective one. One has to agree that the question cannot be
purely subjective because it would mean that if someone uses or wishes to use a mark as a trade mark, the
mark is ipso facto a trade mark. Whether the converse is true is a question that, due to the paucity of
argument, can best be left for another day. Triomed's argument that Beecham has failed to use the shape of
the tablet as a trade mark may arguably confuse or conflate the requirements for a trade mark with the
provision that a trade mark, which is not used, may be removed from the register (section 27).
[14] Beecham relied upon market survey evidence in order to determine the level of recognition of the Augmentin
shape by pharmacists. This evidence is of particular importance to Beecham's case as a whole and it
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would be useful to consider it at this juncture. Augmentin tablets with the registered shape come in two
dosage sizes: 375 and 625mg active ingredients although, since they contain excipients, they weigh
respectively 686,22 and 1120,33mg.13 These have been on the market since the mid 1970's and Augmentin is
one of the most commonly prescribed pharmaceuticals. In conducting the market survey, a number of randomly
selected pharmacists were shown a 375 mg Augmentin tablet stuck to a board, thereby covering the word
mark. The exercise was repeated with a 375 mg Augmaxcil tablet with another group of pharmacists. Both
groups were asked the same question: "Can you please
View Parallel Citation
tell me the name of this antibiotic?" It is not necessary to go into detail but it can be accepted that the
interviewees overwhelmingly identified both tablets as Augmentin. This response, according to Beecham's
argument, establishes that the relevant sector of the public regards the shape as something used by Beecham
(in the words of the definition of "trade mark") to distinguish its goods from those of its competitors in the
course of trade.
[15] The court below was not prepared to have regard to the results of the survey, principally on the ground that
the wrong question had been asked (at 537BC). I agree. The 375 mg Augmentin tablet is not the registered
trade mark. (One wonders immediately why the exercise was not conducted with the 625 mg tablet. Are there
too many tablets on the market of that size with a similar shape?) The interviewees should have been shown
the mark as registered. I am satisfied that in such event they would have replied with less confidence.
Pharmacists do not buy or dispense drugs by way of shape. To show a pharmacist one of the most dispensed
tablets would invariably have led to its recognition by form. But that does not answer the question posed
earlier, namely whether Beecham used or proposed to use the shape of the tablet "for the purpose of
distinguishing" it from tablets sold by others or to distinguish these tablets from other tablets.14 Another,
albeit similar, approach would be to ask whether any pharmacist would regard the shape alone as a guarantee
that the tablet was produced by Beecham.15 As Jacob J pithily remarked in British Sugar PLC v James Robertson
& Sons Ltd [1996] RPC 281 (Ch D) 302:
"There is an unspoken and illogical assumption that 'use equals distinctiveness'."
He also quoted Lord Russell, speaking about word marks (the principle applies to every kind of mark) in The
Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd [1938] 55 RPC 125 (PC) 145:
"A word or words to be really distinctive of a person's goods must generally speaking be incapable of application
to the goods of anyone else."
[16] Is the mark, in terms of section 10(2)(a) capable of distinguishing within the meaning of section 9? Section 9
provides as follows:
"(1)In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in
respect of which it is registered or
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proposed to be registered from the goods or services of another person either generally or, where the trade
mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.
(2) A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the date of
application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by
reason of prior use thereof."
View Parallel Citation
[17] In considering a similar attack under the equivalent British provision, Philips II 16 held that the fact that a
trade mark, by use, has become such as to denote goods of a particular provenance, does not necessarily
mean that it is capable of distinguishing those goods in the trade mark sense. The more a trade mark is
descriptive of the goods, the less likely it will be capable of distinguishing them in this sense. Aldous LJ
therefore concluded that if a trade mark is primarily descriptive it requires "sufficient capricious alteration" to
enable it to perform a trade mark function.
[18] The question whether the shape of an article could only be capable of distinguishing if it contains some
capricious addition, such as an embellishment, which has no functional purpose was then submitted to the ECJ,