Glaxo’s colour trade mark for inhalers invalidated

Abstract colour trade marks are notoriously difficult to protect in the EU, even in rather specialized product markets like that of inhalers. The German Patent Court recently invalidated Glaxo’s violet colour mark for such goods (case 25 W (pat) 29/22).

Background

In 2015, Glaxo obtained registration of German trade mark no. 302015044432 for the colour purple (Pantone 2587C):

It covered the following goods:

Class 5: Pharmaceutical products and pharmaceutical preparations for the treatment of asthma, chronic obstructive pulmonary disease [COPD], and other respiratory diseases, in particular bronchodilators, each for use with powder inhalers.

Class 10: Powder inhalers.

In 2019, a third party filed an application for a declaration of invalidity against Glaxo’s colour mark arguing that it lacked distinctiveness and was descriptive.

Glaxo limited its trade mark by adding ‘prescription-only’ to the goods in classes 5 and 10 above. The German Patent and Trade Mark Office dismissed the application. It found that the trade mark was not inherently distinctive but had acquired distinctiveness through use.

The applicant appealed to the German Patent Court. In the course of the appeal proceedings, Glaxo limited its trade mark to the following goods:

Class 5: Prescription-only powder inhalers for the treatment of asthma and COPD containing the active ingredients salmeterol and fluticasone;

Class 10: Prescription-only powder inhalers intended exclusively for the delivery of salmeterol and fluticasone.

The German Patent Court’s decision

The Court upheld the appeal and declared the trade mark invalid.

Inadmissible limitation

First, the judges considered Glaxo’s limitation before the Court to be inadmissible. While the trade mark owner may restrict the specification at any time, the restriction must comply with the principle of legal certainty. Accordingly, the scope of trade mark protection must be clear and unambiguous. Restrictions can only be accepted if they affect the general and objective characteristics and intended purposes of the goods and services in an economically reasonably and thus legally definable manner, whereby permanent characteristic criteria are essential. Amendments are not acceptable if they do not change the objective characteristics of the goods and services.

To the extent that Glaxo had amended the goods in class 5 to cover inhalers, the judges found that they could only be registered in class 10. Inhalers are no pharmaceutical goods or preparations, which fall in class 5. Therefore, the initial wording of the goods did not cover the amended goods. Glaxo actually exchanged the goods in class 5 and did not merely limit them.

The amendments to class 10 were deemed inadmissible because the new wording did not limit the goods on the basis of general and objective characteristics. Inhalers are not designed in a way to only deliver salmeterol and fluticasone. They can deliver any other pharmaceutical substance for inhalers.

Since the restrictions were deemed inadmissible, the invalidity application had to be assessed with respect to the list of goods as amended before the German Patent and Trade Mark Office.

No inherent distinctiveness

The judges found that the trade mark lacked inherent distinctiveness. Starting from the premise that colours are generally perceived as decorative, functional or descriptive and thus not as indications of the commercial origin, the Court found that Glaxo did not establish special circumstances that the specific shade of purple fulfilled the origin function. This may be the case where the goods are very narrowly defined, the market is specific and consumers are used to perceiving colours as a source indicator.

While the judges accepted that the market for products for asthma, COPD and other respiratory diseases is very narrow, there was not sufficient evidence that consumers got used to perceiving colours as source identifiers. Although competitors used specific colours (red by AstraZeneca, gold by Elpen, pink by Chiesi and orange by Mundipharma and Novartis), these were not ‘house colours’ allowing consumers to link the product to a specific company. Mundipharma and Novartis used a similar colour tone and other companies used various shades of red, yellow, green, orange and white. These colours were either decorative, indicated the active ingredients or created an association with the company selling the inhalers. However, the evidence did not show a largely unanimous perception of colours as indications of origin.

No acquired distinctiveness

The Court also dismissed Glaxo’s claim of acquired distinctiveness.

The relevant public consisted of medical and pharmaceutical professionals as well as patients. This applied to prescription-only and non-prescription goods.

The judges found that acquired distinctiveness must be proven for each subsection of the relevant public, i.e. for patients and for professionals.

Glaxo submitted several surveys. One of them only showed that approximately 20 % of the relevant public understood the colour as a source indicator.

All other surveys reached the threshold of 50 %, which German courts require to establish acquired distinctiveness. However, those surveys did not include all consumers but excluded users of specific inhalers. The Court also questioned whether it was permissible to exclude medical specialist such as pneumologists.

Comment

Some key takeaways from the decision:

1. Non-traditional trade marks such as colour marks should be filed for a rather narrow list of goods or services. Establishing a specific market (for inherent distinctiveness) or that a significant part of the public understands the sign as a source indicator (for acquired distinctiveness) is easier for a specific product than for a rather broad category of goods.

2. It is not possible to define your own market by limiting the specification of the goods or services arbitrarily (as is done more often than not when presenting a company’s market share and trying to arrive at a high figure). If a limiting feature is not relevant for the objective characteristics of the goods or services, it is inadmissible. E.g. restricting the goods for use by a particular public like professionals will not be possible, if the goods or services can also be used by non-professionals.

3. Establishing inherent distinctiveness by establishing a specific market where consumers are used to understanding colours as an indicator of origin is a concept that is still developing. For instance, it seems that the German Patent Court required that all inhalers in the market must have unique colours. Is this at odds with the conditions for acquired distinctiveness? In the latter case, it is not necessary that the entire relevant public perceives the sign in question as a source indicator. In Germany, more than 50 % is sufficient. By the same token, should it not be sufficient if large companies with considerable market shares in the relevant sector (here: inhalers) use individual colours? This indicates that a significant part of the public perceives colours as source indicators. Also, should hues such as white and grey not be ignored because they are ‘neutral’, meaning that consumers do not perceive them as indications of the commercial origin? 

 

The picture is by Christopher Welsch Leveroni and used under the licensing terms of pexels.com.