Smith, Kline & French v. Sterling Winthrop, 1975



Citation: [1975] 2 All ER 57


Bench: Lord Diplock, Lord Simon, Lord Kilbrandon, and Lord Salmon.


Court: The House of Lords


Facts: Smith, Kline & French made an attempt to trademark the appearance of a pill. The pharmaceutical preparation, to the appearance, had maroon color applied to one half of the capsule, the other half was colorless and transparent showcasing the content within (i.e, yellow, blue, and white-colored chemical). The Registrar of trademark refused to register the mark and the same was challenged in court.


Issues: Whether a functional aspect of a product be protected as a trademark?


Laws: Trade Marks Act, 1955 (UK)


Analysis: The Court deliberated upon what types of marks are covered under the definition of a “mark” as mentioned in the Trade Marks Act of 1955.

The Court reiterated the fact that the law does not exclude marks that cover the whole of the visible surface of the goods to which it is applied from the definition of ‘trade mark’. Such a mark is as capable of indicating a connection in the course of trade between the goods and the proprietor of the mark as it would have been if it had only covered half or three-quarters of the visible surface.

The Court set aside the decision of the Registrar and the decision of the lower courts and allowed the packaging and the look of the product to be registered as a valid trademark.


Conclusion: This decision shaped the way in which “trademarks” were viewed. It broadened the scope of what can be considered a trademark and whether the interference of functionality will disqualify the mark from being used as a trademark. This, in a way, paved the path for protection and recognition of trade dress.

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