Like Cadbury before them, Glaxo’s hard-fought attempts to register a trade mark for a shade of purple have been rejected. In this case, Glaxo had sought to register the colour of its seretide inhalers and asthma treatments as a trade mark, by providing the description “Purple – Pantone: 2787C” and this sign:
The General Court of the European Union upheld earlier decisions by the European Union Intellectual Property Office and its Board of Appeal, commenting that it was not in the public interest for colours to be monopolised in this context, and found that the mark applied for lacked “inherent distinctive character” and that the evidence of acquired distinctiveness provided by Glaxo (in opinion surveys and comments of doctors and pharmacists on social media and website, as well as sales figures) was not sufficient to demonstrate that it had acquired distinctive character through use (Case T‑187/19).
Marks devoid of any distinctive character
Glaxo appealed the earlier findings that the application was not eligible for registration under Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001), on the basis that it was devoid of distinctive character.
In considering this appeal, the General Court observed that colours “possess little inherent capacity for communicating specific information” and noted that the general interest underlying Article 7(1)(b) was indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer by enabling him or her, without any possibility of confusion, to distinguish that product or service from others which have another origin. Taken together with the public interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type, the General Court considered that colours and abstract combinations of colours cannot be regarded as being inherently distinctive save in “exceptional circumstances”.
Considering Glaxo’s case in light of those considerations, the General Court found that, in the relevant market including inhalers for respiratory ailments, colours can be used to convey to the public information relating to the characteristics of the goods. In such circumstances, it would not be in the public interest for the availability of a colour to be restricted for other traders, as such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader. The General Court rejected Glaxo’s argument that the colour purple was specifically chosen because of its unusual, unique and memorable character and because of the fact that it had not been used by any other competitor, observing that novelty and originality are not relevant criteria in the assessment of whether a mark has distinctive character.
Acquired distinctive character
The General Court also considered – and rejected – Glaxo’s appeal that it had established distinctive character acquired as a consequence of the use made of the colour, within the meaning of Article 7(3) of Regulation No 207/2009 (now Article 7(3) of Regulation 2017/1001).
Glaxo argued that it had provided sufficient evidence that the shade of purple it used was recognised in the EU, and specifically by medical professionals, as an identifier for its inhalers. It had also offered evidence that those inhalers are the only ones in that colour upon the European market.
Since it had already been found that the mark was devoid of inherent distinctive character in the EU, the General Court emphasised that that mark must therefore have acquired distinctive character through use throughout the EU in order to be capable of being registered. In respect of who was to find the mark distinctive, the General Court found that the Board of Appeal was right in holding that, even if the choice of the goods in question was influenced or determined by intermediaries, such as healthcare professionals, the existence of distinctive character acquired through use also had to be demonstrated in respect of end consumers, namely patients.
Accordingly, it was necessary for Glaxo to establish that the sign at issue had, before the application for registration of a mark was filed, acquired distinctive character through use throughout the European Union in respect of a significant portion of the relevant public, including patients. Glaxo produced various evidence, all of which was found wanting.
- Opinion surveys were rejected on a number of grounds, including that:
- the surveys were carried out in 15 Member States, with patients interviewed in just 10 of those, and no information was provided to make it possible to assess how representative the sample chosen in each Member State was and, therefore, to determine the probative value of the surveys;
- the number of patients and of professionals interviewed appeared to be much too low to be reliable;
- interviewees were shown only one image representing the shade of the colour purple in question. The inability to choose between several images, or even several shades, did not allow interviewees to express whether they associated a particular shade with the undertaking; and
- the surveys conducted in the majority of the Member States did not specify the Pantone shade in question and, in one case, the sample shade used differed from the other shades of purple used.
As a consequence, the results of these surveys could not be extrapolated to other Member States.
- Statements of general practitioners and pharmacists and extracts from blogs and websites were noted to merely refer to the colour purple in general. Since the goods in question are marketed under several shades of purple, that evidence was not considered capable of demonstrating that a link has been established by the relevant public between the Pantone 2587C shade of purple and the goods concerned and, consequently, that the mark applied for had acquired distinctive character through use.
- Sales figures and advertising materials may be regarded only as secondary evidence which may support, where relevant, direct evidence (such as survey evidence) of distinctive character acquired through use. Absent such direct evidence, the sales figures only demonstrate: “that the applicant has sold large quantities of seretide inhalers within the European Union“.
In these circumstance, the action was dismissed in its entirety.
Points to note
This judgment provides yet another salutary lesson as to the importance of considering very carefully the scope and utility of any survey evidence put forward to the Courts. In this case, insufficient focus on the distinctiveness of the particular shade of purple in question, as opposed to purple in general, together with the limited number of people surveyed, meant that the survey evidence was rejected.
This is not the first time that survey evidence in respect of Glaxo’s purple inhalers has been found wanting; in Glaxo Wellcome UK Ltd v Sandoz Ltd  EWHC 2545 (Ch), the High Court dismissed an action for passing off bought by Glaxo against Sandoz in respect of use of the colour purple for its competitor inhaler. In order to succeed, Glaxo had to demonstrate that, at the relevant date, the colour purple was distinctive of Glaxo’s seretide inhaler in the mind of the relevant public. Unfortunately for Glaxo, much of its evidence of goodwill in that case was based on survey evidence that had been prepared in the context of the application to register the colour as a UK trade mark. As such, it did not comply with ‘the Whitford Guidelines’ in relation to the admission of survey evidence in trade mark infringement cases. Much like the General Court in this case when finding the mark devoid of inherent distinctive character, Lord Justice Arnold found that the colour purple was viewed by patients as merely indicating an inhaler with a particular purpose and active ingredient, as opposed to trade origin, so Sandoz had a legitimate reason for using that colour.
 The guidelines set out by Mr Justice Whitford in Imperial Group plc v Philip Morris Ltd  RPC 293, who observed that, if a survey is to have validity:
- the interviewees must be selected so as to represent a relevant cross-section of the public;
- the size must be statistically significant;
- the survey must be conducted fairly;
- all the surveys carried out must be disclosed including the number carried out, how they were conducted, and the totality of the persons involved;
- the totality of the answers given must be disclosed and made available to the defendant;
- the questions must not be leading nor should they lead the person answering into a field of speculation he would never have embarked upon had the question not been put;
- the exact answers and not some abbreviated form must be recorded;
- the instructions to the interviewers as to how to carry out the survey must be disclosed; and
- where the answers are coded for computer input, the coding instructions must be disclosed.