Another lost battle over the purple inhalers

Earlier this month, the General Court ended Glaxo's five-year attempt to register a purple colour as a trademark for asthma inhalers and ruled that the mark lacked a distinctive character. The judgment reaffirms a strict approach to the registration of single colour marks in the EU.

Brief summary of the key facts and arguments

Glaxo Group Ltd filed an EUTM application for a colour purple (“Purple – Pantone: 2787C) as depicted below:

The protection was sought for asthma inhalers and pharmaceutical preparation.

EUIPO rejected the colour mark application in its entirety arguing that the purple colour lacked distinctiveness and acquired distinctiveness was not proved.

The company appealed and the Board of Appeal dismissed the appeal. The Board found that concerning the pharmaceutical sector, colours usually indicated the main active ingredients, the purpose or the characteristics of the medicinal product. Given this, the Board claimed that the colour purple was descriptive for inhalers and devoid any distinctive character.

Moreover, the Board also pointed out that the relevant public had a specific interest in having colours kept available for competitors in the pharmaceutical market, as patients tend to take a generic pharmaceutical product more regularly if the presentation of the medicinal product is similar to the one of the original product.

Glaxo Group, unsatisfied with such a result, brought an action before the General Court. However, the Court upheld the decision of the Board and endorsed the conclusion that the colour mark at hand lacked distinctiveness.

The Court reiterated the established case-law in relation to colour marks confirming that colours were usually a “simple property of things” mainly used for decorative purposes. Since the relevant public is not used to perceive colours as a badge of origin, they lack inherent distinctivenesssave in exceptional circumstances”.

Colours are normally a simple property of things. Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning.

The Court also noted that, on the pharmaceutical market, colours could be used to refer to some specific characteristics of the goods. Given the limited number of colours, granting a trademark protection over a single colour would not be in the public interest because such an extensive monopoly would prevent other competitors to use the same colour on their products of the same kind .

In addition to that, Glaxo´s arguments that the purple colour is unusual and unique were disregarded as novelty and originality are not relevant when assessing distinctiveness of a mark.

It is not the first lost battle for Glaxo´s purple inhalers. Last year, the High Court of UK dismissed Glaxo´s action for passing off concerning the use of purple inhalers by its competitors (find the judgement here).

This General Court´s decision shows again how difficult it is to get a registration for colour marks in the EU due to the strict case law in this regard. However, is it really accurate that the public is not used to perceive a colour per se as a trademark?

Sylvie Rehackova

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Disclaimer: All articles in this blog are opinions of  authors and not the official position of the EUIPO, CPVO and other offices.

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