A decision rendered on 12 July 2017 by the District Court of Brussels and recently published in the Netherlands, covered the the validity of the Benelux purple inhaler colour mark of Glaxo. The purple inhaler trade marks of Glaxo have been much discussed in many legal proceedings throughout the European Union.
Facts, registered colour mark and alleged infringing product of Sandoz
The initiator of the Belgian proceedings is Sandoz N.V., who sought a declaration of invalidity of the following Benelux colour mark, which was filed on 2 July 2015 by Glaxo Group Limited with number 0977861 in classes 5 and 10:
The registration is for the colour Violet 2587C covering pharmaceutical preparations for the treatment of asthma. Since 1998 Glaxo uses the depicted Violet 2587C colour for the commercialization of Seretide medicines. After sixteen years of commercialization of different inhalers bearing the purple colour packaging, Glaxo filed for the Benelux colour mark. According to Glaxo the choice for the purple colour is highly unusual, it is shown on various inhalers within the Seretide product line and marketing materials, and it resulted in a revolutionary market strategy. Glaxo states that the “purple inhaler” is a well-known product amongst asthma and COPD patients.
As a counter claim Glaxo requested a declaration of infringement of the colour mark, because of the following AirFluSal inhaler of Sandoz, that Sandoz planned to launch on the Belgian market:
The parties agreed that the purple colour of the Glaxo inhalers is not identical to the colour mark Violet 2587C. In addition, Sandoz had already filed for an EU registered design right for the protection of the design and packaging of the AirFluSal inhaler. Glaxo registered its purple colour mark after a number of legal proceedings were initiated against the AirFluSal of Sandoz.
Decision: mark acquired distinctiveness
Sandoz claimed that the purple inhaler colour mark is invalid, because of a lack of distinctive character. Sandoz argued that different colours of different inhalers reflect the use and type of medication. Therefore colours indicate whether it concerns a preventer, controller, maintenance or a reliever. Glaxo responded that it is the first who commercialized a combination of two relievers in one inhaler. According to Sandoz these kind of “combination” inhalers are usually brought onto the market in a purple, violet, dark pink or other “warm” colour. The use of the colour thus has informative value.
The Court found that the registered purple colour is very specific type of purple, but it did not have the required distinctiveness on the date of application. A trade mark that is not ‘ab initio’ distinctive can only be protected if it is used to such an extent that it has acquired distinctiveness.
To prove the acquired distinctiveness, according to the court of Brussels, doctors, medical practitioners, pharmacists and patients form part of the relevant public. The Court found that on the basis of the different market studies the colour mark had acquired the required distinctiveness with regard to the goods and services claimed in the three member states of the Benelux, because the market surveys showed that the relevant public identified the mark as denoting the source of the goods or services in respect of which the mark is registered. For instance, 96% of the Luxembourg general practitioners and 76.9% of the Luxembourg pharmacists confirmed that inhalers bearing the purple colour are originating from Glaxo or contain Seretide.
The Court therefore decided that Glaxo proved conclusively that the purple colour mark had acquired distinctive character through use within the Benelux.
Decision: no infringement
In assessing whether Sandoz is infringing the valid colour mark of Glaxo, the decision shows the following comparison of the purple colour used by Glaxo (left) and Sandoz (right):
Because the colours are not identical, the courts rejected trade mark infringement on the basis of article 2.20, sub 1.a of the Benelux Convention on Intellectual Property. The Belgian District Court also considered the latter mark not similar enough to cause a likelihood of confusion. The Court found that because of the fact that the inhalers, for which a prescription is required, will be prescribed by pharmacists and doctors, who prescribe the inhaler based on active ingredients and not on the basis of a colour, there is no risk of a likelihood of confusion.
Mainly because of the decision-making process for a specific inhaler is being handled by the professional and not by the average consumer, trade mark infringement was also rejected on the basis of the ground that the colour used by Sandoz would take unfair advantage of or be detrimental to the distinctive character of the colour mark of Glaxo.
While the Benelux colour mark of Glaxo did thus not breathe its last breath, the decision was not the breath of fresh air it wished for.