Purple asthma-inhaler: no infringement, not misleading

A patent is in principle valid for 20 years. Thereafter, the monopoly lapses and other parties can proceed with the invention. The medicine, Seretide (which is used in asthma-inhalers, “puffers” from the producer GSK) was protected by patent. GSK sold inhalers in various shades of purple and in diverse dosages. 

After the lapse of the validity of the patent in 2013,  competitor Sandoz also began to sell a purple asthma-inhaler. GSK commenced summary proceedings: the patent had indeed expired, but GSK had in the meantime also registered the colour purple as a trade mark for the goods in question, and Sandoz’s inhalers infringed that right. Moreover, there was also case for misleading commercial practices due to the fact that the purple coloured products looked too similar. 

Did Sandoz infringe the trade mark? Sandoz emphasised that it is usual in the medicine market that a certain type of medicine is depicted using a certain colour. Asthma-relievers (a different type of asthma medicine) are usually blue. GSK also uses different colours for different medicines. Using purple is thus descriptive, and there was no trade mark infringement.

The court upheld Sandoz’s arguments: the colour purple is indeed descriptive for asthma-inhalers. Furthermore, it did not appear sufficient that the public, despite intensive use by GSK, associated the colour purple as a trade mark (“acquired distinctiveness”). It is perhaps the case that GSK systematically used the colour, but this was always in combination with other trade marks and colours, as well as in different tints. In short, there was too much uncertainty to impose an infringement injunction in interlocutory proceedings. An important lesson for the proprietors of colour trade marks: always ensure that the colour does not describe the nature of the product and use the trade mark consistently in one way.

Finally, the court also rejected GSKs argument that there was a case of unfair commercial practices for consumers. The asthma-inhalers are only available on prescription. It is, therefore, the doctor or the chemist who makes the purchase decision and not the consumer.

Bram Duivenvoorde

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