Glaxo sees red over competitors use of the colour purple

Pharmaceutical company Glaxo Group Limited has failed to prevent their rival, Sandoz, from using the colour purple on an inhaler.

Glaxo is the registered owner of EUTM no. 3890126 which is a colour trade mark consisting of a representation of the top of an inhaler shown in two different shades of purple.  The trade mark registration includes the following description:

"The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler."

The trade mark is used in connection with inhalers alongside the word mark SERETIDE.

Glaxo's Infringement Claim

Glaxo pursued Sandoz for infringement and an EU-wide injunction against Sandoz, after the rival marketed an inhaler, also coloured purple, under the marks AIRFLUSAL and FORSPIRO.  The Court found in favour of Sandoz and refused to grant an injunction.

Sandoz Counterclaim

Sandoz counterclaimed that Glaxo's trade mark was invalid.  Summary judgement has been issued agreeing that Glaxo's mark is invalid and the mark will now be removed from the register.

Arguments as to Validity

Graphical Representation

The main argument in favour of a finding of invalidity was that the sign was not cable of being 'represented graphically' within the meaning of Article 4 CTMR.  The 'Sieckmann' criteria sets out seven specific criteria against which a mark will be considered as to whether or not it can be represented graphically.  The criteria state that in order to qualify for registration a mark must be "clear, precise, self-contained, easily accessible, intelligible, durable and objective."

Would the new CTM Regulation Help Glaxo?

The new CTM Regulation (Reg (EU) 2015/2424, which came into force on 23 March 2016) removed the need for graphic representation.  It did, however, retain the requirement that the subject matter of the mark be "clear and precise".

Moreover, the Sieckmann criteria's applicability is confirmed in the preamble to the CTM Regulation therefore it may be of little use to Glaxo.  As a note we anticipate that it is unlikely that the removal of the need for graphic representation will open the floodgates to successful registrations of 'non-traditional' marks (such as, for example, colour, sound, taste and smell).

Visual Representation

Glaxo argued that the mark should be viewed as the visual representation included in the application but this did not relate to the description of the mark.

The court considered previous case law including Cadbury's registration of the colour mark purple for chocolate in which questions regarding the description of the mark were raised.

In this case the decision considered two main questions:

How should an application be construed where there is not strict link between the visual representation and the description; and
How much freedom of variation does a colour mark enjoy?

The Court held that there was no automatic precedence between the visual representation and the description and held that the registration was not clearly and unambiguously limited to just one sign.

The scope of protection afforded by the mark would be unknown to competitors and registration would allow unfair competitive advantages on the proprietor of the mark.