China’s Sinocare Meditech has successfully defeated claims in the UK that it infringes a three-dimensional trademark utilized by Abbott Diabetes Care in connection with the on-body unit for its wearable “FreeStyle Libre” glucose monitoring device. High Court Judge Richard Smith ruled today that the mark lacks distinctiveness, and is thus invalid, dooming Abbott’s infringement case and clearing a path to Sinocare to market its competing “iCan i3” glucose monitor as-designed.
Abbott Diabetes Care suffered a major setback in the UK this morning, when a London court said it cannot protect the three-dimensional trademark associated with the on-body unit, or OBU, of the “FreeStyle Libre” continuous glucose monitoring, or CGM, device.High Court Judge Richard Smith (see here) found in favor of Abbott’s Chinese rival Sinocare Meditech in full, dispositively declaring the features claimed by Abbott non-distinct and, in many instances, functional.
Alternatively, however, Smith said that even if Abbott’s mark was entitled to protection he still would not declare Sinocare’s OBU infringing or dilutive, nor would he enter a finding that Sinocare adopted its design in bad faith.
To the contrary, Smith wrote, Sinocare “acted fairly in relation to Abbott’s legitimate interests as proprietor of the Mark.”
Abbott’s UK Trademark No. 3,779,922 relates to the circular, white OBU which houses the sensor and transmission electronics of the FreeStyle Libre CGM. In filing suit last year, Abbott claimed Sinocare had purposely designed its own OBU to mimic the Abbott mark and then flooded the European market with the lookalike “iCan i3” wearable CGM, which it depicts on the iCan i3 product packaging.
Sinocare responded by denying infringement and challenging the validity of Abbott’s mark.
The case proceeded to trial in October 2024 (see here).
In today’s ruling, Smith explicitly rejected Abbott’s position that its OBU has acquired distinctiveness in the CGM market. In order to prevail, Abbott was required to show that “a significant proportion of the relevant consumers,” upon seeing Abbott’s mark used in relation to CGMs, “would perceive it as designating the goods of a particular undertaking,” but Smith said the plaintiff failed to satisfy that burden.
“The most that can be said” in regard to Abbott’s consumer survey evidence “is that they recognized the Mark,” Smith wrote. Even combined with the “significant marketing and advertising spend” and intense use by Abbott, he continued, that evidence does not “show that [healthcare professionals] and patients regarded the shape alone as a badge of origin.”
Although his finding of non-distinctiveness renders Abbott’s trademark invalid, thus disposing of Abbott’s case in full, Smith proceeded to reach the parties’ remaining positions nonetheless.
Drawing heavily from Lego Juris A/S v OHIM, in which the EU Court of Justice in 2010 reached a similar conclusion in regard to a red Lego brick, Smith said that certain elements of the plaintiff’s 3D mark — including its “opaque/ white color” and a two-tone, darker lower section — are unnecessary to achieve a technical result. The same cannot be said for the majority of other features claimed by Abbott, however.
To that end, Smith deemed “the flat, circular shape” of the Abbott OBU, along with its “outer adhesive area,” “smooth texture and curved edges,” and “central cogwheel” functional in nature.
Lastly, he turned to the question of infringement of the mark’s non-functional features and noted that an OBU is, more often than not, worn under clothing and thus not visible to the public in most scenarios.
Thus, he continued, it is “much more likely that a relevant consumer might see a two-dimensional image of an OBU in print or online form,” but even then, the likelihood of confusion over product origin is low where “those images are almost invariably accompanied by traditional marks” which serve to distinguish the parties’ goods.
His conclusions appear to be shared by the Austrian Supreme Court, which recently denied Abbott interim relief there in an infringement action against Sinocare. In today’s ruling, Smith indicated the Austrian court voiced concerns that Abbott’s OBU is non-distinctive but also found that even if it was, confusion is unlikely.
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