No success for Glaxo in protecting purple colour mark

The General Court agreed with the EUIPO that a colour mark for a particular shade of purple was non-distinctive in relation to pharmaceutical and medical goods

19 October 2020

Glaxo Group Ltd v EUIPO, ECLI:EU:T:2020:405 (T‑187/19)

Background

In 2015 Glaxo Group Ltd applied for an EU trade mark (EUTM) registration for a single purple colour mark with the description 'Purple – Pantone: 2587C', covering a narrow specification of goods in Classes 5 and 10 relating to pharmaceutical preparations and inhalers for the treatment of asthma and/or chronic obstructive pulmonary disease.

The mark was rejected under initial examination as being devoid of distinctive character, and Glaxo responded with evidence of acquired distinctiveness of the mark through use. The EU Intellectual Property Office (EUIPO) accepted that the evidence submitted was sufficient to find the requisite level of acquired distinctiveness and published the application.

Unfortunately for Glaxo, this was not the end of the matter, with the mark then facing oppositions, third-party observations, and ultimately a further absolute grounds objection by the EUIPO going back on its earlier acceptance and refusing the application as being neither inherently distinctive, nor having acquired distinctiveness. This objection was backed by third-party and online evidence that inhalers are often classified by colour and, in some EU member states, it is known that purple inhalers contain certain combinations of medicinal products to treat asthma. Therefore, the mark would be seen purely as an indication of certain characteristics of the goods, not an indication of commercial origin.

Glaxo appealed to the Board of Appeal of the EUIPO, to no avail, and then to the General Court.

General Court judgment

Glaxo alleged that the Board had:

  • incorrectly assessed the inherent distinctiveness of the mark;
  • wrongly required more than a minimum level of distinctiveness; and
  • erred in not finding the requisite level of acquired distinctiveness, including errors in the assessment of the relevant public and the surveys, and failure to extrapolate from the evidence.

The General Court dismissed each of these pleas.

Regarding (1) and (2), the Board did not incorrectly assess the inherent distinctive character of the mark – it did lack this – and did not require more than a minimum degree of distinctive character – as it found that the mark was devoid of any distinctive character. This was in line with established case law, with the court stating that 'in the case of a colour per se, distinctive character without any prior use is inconceivable save in exceptional circumstances'.

As to (3), the court confirmed that acquired distinctive character through use of a mark 'must be demonstrated throughout the territory of the European Union, and not only for a substantial part or the majority thereof'. The meaning of ‘throughout the European Union’ engages the somewhat contradictory principles that, as explained by the court, whilst it 'would be unreasonable to require proof of such acquisition for each individual member state', if the evidence filed does not cover 'even a part [of the European Union] which is not substantial or consists of only one member state', then distinctive character throughout the European Union cannot be found.

Glaxo had filed opinion surveys of general practitioners, pharmacists and/or patients in 15 member states. The probative value of surveys depends on the survey method used. Glaxo had not provided any information regarding how representative the chosen sample was. Less than 1 per cent of the professional public in each state participated in the surveys. Further, the patient surveys were carried out in only 10 member states and only around 50 to 200 patients were interviewed for each state. Given Glaxo’s significant sales volume, turnover and market shares, these numbers were 'much too low to be reliable'. Additionally, in almost all states the surveys did not specify the Pantone colour code, in some surveys the shade was different to others, and the participants were only shown one image of one shade of purple and so were not able to choose Glaxo’s particular colour from several images or shades. Overall, the court confirmed the Board’s finding that the surveys were not sufficient to demonstrate acquired distinctive character in the member states concerned and, therefore, could not be extrapolated to other member states to find distinctiveness throughout the European Union.

The additional evidence filed by Glaxo was also insufficient to establish acquired distinctiveness and the appeal was dismissed in its entirety, with the EUTM refused protection.

Comment

Single-colour marks are notoriously difficult to protect through the unitary EUTM system. There are only a finite number of colours available and public policy considerations in keeping colours free for use. The EUIPO must therefore be completely convinced of distinctiveness before it will grant a monopoly trade mark right to one undertaking to the exclusion of all others.

Colours will not be found to be inherently distinctive save in exceptional circumstances. Therefore, evidence of acquired distinctiveness will almost always be required to achieve registration. As colour marks have no language element, this evidence will need to prove acquired distinctiveness through use throughout the entire European Union. This is an extremely high threshold to meet and, compounded by the many pitfalls intrinsic in survey evidence, is now near impossible in practice, even for the most well-known brands. Brand owners would be well advised to consider their colour mark protection strategy carefully with a trusted legal advisor.

This article first appeared on WTR Daily, part of World Trademark Review, in September 2020. For further information, please go to www.worldtrademarkreview.com.

If you have any questions, please contact Laura Tennant, Georgina Shaw or Jeremy Dickerson, or your usual IP team contact.

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