Court rules against GSK in purple inhaler case

In 1999 GlaxoSmithKline (GSK) began marketing an inhaler called Seretide® Diskos®. It applied to register a trademark relating to its product in 2004 and registration was granted in 2008. Its Community trademark No 003890126 read as follows:

"The trademark consists of the colour dark purple (Pantone Code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone Code 2567C) applied to the remainder of the inhaler."

Sandoz began marketing an inhaler named AirFluSal® Forspiro®, which was also a purple colour (Pantone 2573C). GSK considered that Sandoz's inhaler violated its trademark rights and applied for an EU-wide injunction against Sandoz. However, the court found for Sandoz and refused to grant an injunction.

The court reasoned that, while at first glance the purple colours of the two inhalers were quite similar, the inhalers differed significantly in their form and overall impression, and also partly in their functionality.

Further, the witness statements in particular confirmed that the chief distinctive feature of GSK's inhaler was not its purple colour, but rather its round form, which was unique to the product and made it easily recognisable visually, while also making it comfortable and easy to handle for the consumer. GSK's inhaler thus incorporated a high-quality design. However, the right which GSK invoked to seek an injunction against Sandoz was based on the purple colour of its inhaler. The court found that GSK had not proved to a sufficient degree that the colour of Sandoz's inhaler violated the rights in its own inhaler based on trademark or marketing law.

In this regard, the court confirmed that trademark rights fundamentally imply a limitation of the fundamental EU principle of the free circulation of goods and free competition. According to the existing trademark rules and case law, including that of the Court of Justice of the European Union, there was nothing to substantiate such an extended interpretation of a trademark as that suggested by GSK, whereby the registered right was considered totally independently of its physical form.

The court further attached importance to the fact that GSK had not proved to a sufficient degree that the purple colour served as a distinctive sign for its inhaler or could in any other way influence consumers' purchasing decisions. The inhaler was a prescription medicine, and it could be assumed that the doctors who prescribed it would emphasise the special functionality of the product for the patient and his or her needs, while the patient would mainly consider the price.

Against this background, there was no basis to accept GSK's claims for an injunction and these were denied accordingly.

GSK was ordered to pay costs to Sandoz. As Sandoz provided no information regarding any special expenses incurred in the litigation, the amount related to attorneys' fees only. This was set at Dkr40,000, considering the importance of the matter and the cost to the parties of a two-day hearing.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen