The Court of Appeal has held that a trade mark for two shades of the colour purple relating to asthma inhalers is invalid.

The case of Glaxo v Sandoz concerned a European Union Trade Mark over two shades of purple in respect of inhalers used for treating asthma. Glaxo (part of the GlaxoSmithKline group of pharmaceutical companies) produced the inhalers and had been granted an EU trade mark over the two shades of purple in question. The trade mark contained a graphical representation of the inhaler along with Pantone references for the two shades of purple.

Glaxo brought a claim for infringement against Sandoz on the basis that Sandoz had infringed Glaxo’s community trade mark by marketing its own purple inhaler.

Sandoz counterclaimed, arguing that Glaxo’s trade mark was invalid since it was not sufficiently precise, nor sufficiently clear. As a result, Sandoz claimed that Glaxo’s trade mark was not capable of being represented graphically as required under applicable trade mark law.

Sandoz was awarded summary judgement on the ground that Glaxo’s community trademark was invalid. The case then progressed to the Court of Appeal which also ruled in Sandoz’s favour. In reaching its decision the Court of Appeal noted that, although the trade mark application did contain a graphical representation of the trade mark on an inhaler (coloured in the two shades of purple), in the Court’s view this did not give sufficient clarity or precision to the trade mark. As a result, the scope of the mark was not clear and the public “would be left scratching their heads” as to what was actually covered by the trade mark.

The Court of Appeal’s decision in this case further establishes the difficulty involved in gaining trademark protecting for a colour and closely follows the decision in the case of Nestle v Cadbury, where a trademark for a colour (purple again) was also refused.

Businesses wishing to register trade marks over colours should not be entirely deterred by this ruling since Glaxo’s initial European Union Trade Mark indicates that it is still possible to protect colours as marks. However, given recent decisions (Glaxo v Sandoz and Nestle v Cadbury) it may be wise to avoid purple.

 For more information on Intellectual Property law, please contact Nick de Figueiredo