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Glaxo's purple still not distinctive

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United Kingdom

In a decision which highlights the difficulty applicants face when registering colour per se trade marks, the EU General Court has upheld the rejection of Glaxo's application to register the colour purple for inhalers.

The General Court has upheld the rejection of Glaxo's application to register the colour purple (Pantone 2587C) for pharmaceutical preparations and inhalers for treating asthma.  Glaxo submitted evidence to show that the mark sought had acquired distinctiveness through use throughout the EU, which was rejected by the examiner and the Board of Appeal.  This judgment is another example of the difficulty applicants face when registering colour per se trade marks (i.e. colours which are not spatially delimited).

Background

In 2015, Glaxo applied to register the colour purple as an EU trade mark (EUTM) with the description "Purple – 2587C" in class 5 (pharmaceutical preparations for the treatment of asthma) and class 10 (inhalers for the treatment of asthma).  Glaxo filed evidence showing that the colour had acquired distinctiveness throughout the EU, including marketing material, sale and market share figures, opinion surveys, articles, employee witness statements, medicine rankings and previous infringement judgments in various member states.

In July 2017, after publication, the examiner rejected the application on the basis that the colour was devoid of distinctive character under Article 7(b) of EUTM Regulation (EU) 2017/1001 ("the Regulation") and on the basis that acquired distinctiveness had not been proven (Article 7(3) of the Regulation).  Specifically, because inhalers are classified by colour and the type of medicinal product, purple indicated the characteristics of the good rather than performing the essential function of indicating origin.

Glaxo appealed to the First Board of Appeal of the EUIPO and in 2019 the Board rejected the appeal.  It held the choice of colours related to the active ingredient in inhalers and the intended characteristics of the good.  The public had an interest in colours being kept free for use in the pharmaceutical market, particularly for the manufacture of generics.  Glaxo had also failed to evidence acquired distinctiveness.

In March 2019, Glaxo appealed the decision to the General Court.

General Court's decision

Glaxo's first argument was that the Board's assessment of lack of distinctive character was wrong.  There was no regulatory or legal requirement for inhalers to be a certain colour, with goods sharing the same characteristics available on the market in a variety of colours.

The General Court rejected this argument.  The Good Practice Guide of the European Medicines Agency ("EMA") recommends that the choice of colour should be considered in product design to ensure there is no confusion with established products.  Glaxo had used different shades of purple on its inhalers to indicate different strengths.  The court held that, in a restricted market where colours are used to convey the characteristics of a good, there was a public interest in preventing one undertaking having a monopoly over a single colour.

Glaxo's second argument was that the Board had failed to extrapolate from Glaxo's evidence that the colour had acquired distinctive character through use throughout the EU.

The General Court held that the unitary nature of an EUTM meant that acquired distinctiveness was required throughout the EU, but may be inferred from evidence of use in only some member states.  Glaxo had failed to adduce evidence from patients, who fell within the "relevant public" along with prescribing doctors and pharmacists.  Due to the way the survey evidence had been presented, it was not possible to assess its probative value.  Specifically, participants were only shown one colour of purple and there was no guarantee that it was Pantone 2587C, meaning the results could not be extrapolated to other member states.
 
In conclusion, the General Court, therefore, rejected Glaxo's appeal.

Implications from this ruling

This case is another example of the difficulties applicants experience in trying to register a colour per se as a trade mark.  In theory, the registration of a colour is possible (indeed, colours are expressly listed in the Regulation as capable of being a sign) provided it satisfies the requirements of the Regulation.  In practice, however, applications are rarely successful and, even where a registration is obtained, they remain vulnerable to invalidation. 

One of the biggest hurdles that applicants must overcome is the reality that colours are not inherently distinctive.  Consumers rarely rely on a colour alone to indicate the origin of a good or service.  That means an applicant must prove that the colour has acquired distinctiveness through use.  Invariably this requires evidence, which is difficult to obtain, not least because a colour per se may have been used in a variety of ways over the years.  The fact that consumers recognise the colour when it appears on a certain type of good or service is not the same as using the colour to indicate trade origin.  Similarly, survey evidence is expensive to obtain and inherently artificial, rarely resembling a consumer's experience of interacting with the good or service.  Therefore survey evidence is difficult (but not impossible) to extrapolate.

This judgment is a further blow to Glaxo following earlier decisions over its UK mark and its unsuccessful passing off case (see our blogs, Purple inhaler still invalid – Court of Appeal ruling and Glaxo pauses for breath – purple inhaler does not infringe.)

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