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  • Writer's pictureRosie Burbidge

Can you trade mark a colour as applied to a product?

Glaxo Group has finally achieved a qualified victory in its attempt to secure trade mark protection for its asthma/COPD inhaler. The company has fought several cases over many years and has been on the wrong end of rulings in the UK concerning the validity of its EU trade mark for the colour purple applied to an inhaler and passing off and a judgment of the EU General Court regarding an EUTM for the colour purple.

This month, however, the EU General Court ruled in favour of Glaxo in a judgment concerning

An illustration of the Glaxo trade mark showing the two tone purple inhaler from different perspectives

an EUTM described as: “Lilac (Pantone ref: 2645C) and deep purple (Pantone ref: 2617C) in or applied to the three-dimensional shape in the proportions shown in the illustration”. (Case T-477/21).

In December 2014, Indian pharma company Cipla had challenged the validity of the mark (which was filed back in April 2001). The Cancellation Division granted the application for a declaration of invalidity, and the Board of Appeal upheld that decision, saying the mark was devoid of distinctive character.

Glaxo challenged that ruling on three grounds and was successful on two of them.

Failure to state reasons on inherent distinctiveness

The Court found that the Board had not set out why the mark, considered as a whole, was devoid of inherent distinctive character. It stated that, as regards a compound trade mark (i.e. one comprising shape, colours and their arrangement):

“any distinctive character may be assessed, in part, in respect of each of its elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character.”

In this case, the Board had not carried out an overall assessment of the constituent elements of the mark even though it had examined the distinctive character of each element individually. Moreover, it was bound to do so, since it gave different reasons for its finding compared to the Cancellation Division.

Contradictory reasoning on role of colour

In addition, the Court found that the decision was vitiated by contradictory reasoning, which also amounted to a failure to state reasons. Specifically, the Board found, on one hand, that Cipla had not demonstrated that the mark was devoid of distinctive character on the relevant date and, on the other hand, that colours had a technical and informative function for consumers of medicinal products such that they were descriptive.

Moreover, the decision did not explain why the principles of the earlier EU General Court judgment on the shape of the colour purple applied to the contested mark and the relevant date in this case. The Court said:

Such a contradiction amounts to a failure to state reasons, since it is impossible for the parties and the Courts of the European Union to determine whether, in the Board of Appeal’s analysis relating to the distinctive character of the contested mark, documents postdating the relevant date by at least 10 years could demonstrate the perception of a certain colour by the consumer on that date and, therefore, whether the applicant for a declaration of invalidity had sufficiently demonstrated that the contested mark was devoid of distinctive character on that date.”

No acquired distinctiveness

On its third argument, Glaxo failed to persuade the Court that the Board had not examined whether the mark had acquired distinctive character through use or examined the relevant evidence submitted.

The Court said that, despite a “clerical error” in its decision, the Board’s reasoning was sound: the mark could not have acquired distinctive character before the filing date because it had not been used throughout the territory of all the EU Member States and the evidence did not demonstrate acquisition of distinctive character between the date of registration and the date of the application for a declaration of invalidity.

What this means

While Glaxo will no doubt be pleased to have annulled the Board of Appeal decision to invalidate its mark (and to have its costs paid), this is by no means the end of the story. The case will now return to the Board, which will have to rule again in light of the General Court’s judgment.

The market for inhalers is large and profitable, which makes trade mark protection very important: companies such as Glaxo argue that consumers associate the shape/colour of a particular inhaler with a certain product, while their competitors contend that certain colours simply indicate the active ingredient.

This is an important issue for all consumer facing businesses from fashion to food. Consumer brands are constantly seeking new ways to stop lookalikes and other close copies which may use a different brand name but are seeking to at best create an association and at worst confuse consumers.

This is a battle that is likely to continue to be fought in the courts for many years to come.

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -

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