• IN THE UK OFFICE

    Inhaler Colours Found Non-Distinctive (Again)

    In the Autumn 2000 edition of Make Your Mark we reported a cancellation action brought by Riker Laboratories against Glaxo’s UK trade mark registration (no. 1524601) covering the maroon and pink colour combination of Becloforte asthma inhalers. Riker’s action was successful, the Hearing Officer finding that the Glaxo colour combination was non-distinctive (Section 3(1)(b)) and that the registration was not saved by the significant sales of Becloforte in the UK.

    A recently reported UK opposition, featuring the same protagonists, evokes a considerable sense of déjà vu. In this case, the mark at issue was Glaxo’s light green and dark green colour combination for their long acting asthma treatment, Serevent (UK2138981). The precise form of the mark claimed was a depiction of an inhaler, for use with a metered dose aerosol can, which had a dark green body and a light green cap. The class 5 and 10 goods claimed were limited to products which delivered either 25 or 50 micrograms of salmeterol xinafoate (the generic name of Serevent) per actuation.

    Riker’s primary grounds for opposition were Sections 3(1)(b), (c) and (d) of the 1994 Trade Marks Act.

    On the basis that

    • Consumers would not take the green colour combination of Glaxo’s product to be indicative of either the type of medicine involved or the strength of the medicine delivered to the patient,

    • The dark green/light green combination was not clearly customary in the pharmaceutical trade, and

    • The word “exclusively” in Sections 3(1)(c) and (d) should be given a strict interpretation, the Hearing Officer found that the opposition, based on Sections 3(1)(c) and (d), failed. Turning to the non-distinctiveness (Section 3(1)(b)) objection, the Hearing Officer decided that, on balance, the average consumer would not see the colour combination as indicative of trade origin. They were more likely to associate the mark with either the specific generic drug or the specific dose of that drug. The mark was therefore origin neutral (rather than origin specific) and would not be seen as identifying the business of the applicant. It followed that the mark was not inherently distinctive and failed to satisfy the requirements of Section 3(1)(b).

     

    That was not the end of the matter, however, because Glaxo had provided a considerable body of evidence attesting to the significant sales of Serevent (and its dark green/light green inhaler) in the UK in the seven year period up to the date of application. The evidence showed that Serevent had a 90% share of the long acting bronchodilator field and about 14% of the total respiratory market. In addition, Glaxo had conducted a survey of 450 UK general practitioners, 53% of whom identified the dark green/light green inhaler as Serevent. None of this was enough to persuade the Hearing Officer to waive the Section 3(1)(b) objection. Whatever the level of sales, there was still no evidence that colour combinations served to indicate trade origin in the asthma/bronchitis market. Further, no supplier appeared to promote his products by reference to the product’s colour scheme. As to the survey, this was criticised in the usual way that surveys are criticised by Tribunals, when they have already decided to reject a mark. It was therefore given little (or no) weight.

     

    Comment

    Once the patent on a successful drug expires, the market share enjoyed by that product will usually fall dramatically as generic competitors launch their own versions of the medicine. The research industry understands this and clearly has to accept it.

    The aspect of the post-patent situation that they find difficult to digest, however, is the generic competitor’s use of product get-up and packaging that is either identical with or similar to that of the original medicine. For example, if the original anti-ulcer drug is sold in black and red coloured capsules, then so are the generic versions. Similarly, if the original asthma product employs a pink and maroon inhaler, then the generic asthma treatments will follow suit.

    Glaxo’s trade mark application for the Serevent inhaler colour combination was designed to thwart what the research industry sees as slavish imitation and unfair competition. The narrowness of the specification of goods illustrates that they were only concerned with the prevention of Serevent inhaler look-alikes. This UK Office decision therefore deals another blow to the research industry and their fight to limit the damage that generic competition can do to drug products coming off patent.

    In the writer’s view, however, some solutions to these problems lie in the industry’s own hands. They should employ novel shapes and/or colour combinations for tablets, inhalers, etc. and use registered designs and copyright to protect those shapes and/or colour combinations. Having done so, then within the constraints placed upon them by health authorities, they should tell doctors and their patients that the novel shapes and/or colour combinations indicate a product source rather than a product type. At the very least such actions should give a research company a fighting chance of registering their colours and shapes (or perhaps their colour/shape combinations) as trade marks prior to or soon after patent expiry.

    If a pharmaceutical company does not like what it believes to be unfair competition once a drug’s patent expires, it should use more imagination, long term planning and resources to prevent it.