Brands can claim exclusive rights to a colour

Out-Law News | 25 Oct 2019 | 2:27 pm | 2 min. read

A recent ruling shows that businesses require strong evidence from customer surveys or expert witnesses to demonstrate the link between a colour and their brand to prevent rivals using the same colour to market their products, an expert in intellectual property law has said.

Iain Connor of Pinsent Masons, the law firm behind Out-Law, was commenting after pharmaceuticals business Glaxo lost a legal battle with generic medicines manufacturer Sandoz before the High Court in London over rights to market asthma inhalers coloured a particular shade of purple. Connor said the High Court's ruling has "wider implications than for just the pharmaceutical sector", however.

In the case before the court, Glaxo claimed that Sandoz had passed off its inhaler product as being connected in the course of trade with Glaxo and/or equivalent to its own inhaler product as a result of the "get-up and packaging" used for the Sandoz inhaler.

The law of passing off applies where businesses acquire goodwill in their brand. Where such goodwill has been acquired, businesses are entitled to prevent other companies offering copycat goods or services that consumers may confuse as coming from the more recognised brand.

Glaxo claimed that Sandoz's use of purple for its inhaler conveyed a misrepresentation that deceived patients as to trade origin and the equivalence of the Sandoz product with its own. Glaxo argued that Sandoz was "aware of the risk of deception and proceeded recklessly in the sense of not taking care to avoid that risk materialising".

However, according to the High Court, to succeed with its claims, Glaxo had to show that the colour purple was "distinctive of the trade origin" of its inhaler, and that the colour was "distinctive of the relevant characteristics" of the Sandoz inhaler.

The court, though, rejected both of Glaxo's passing off claims.

The court made it clear that, in principle, it is possible to acquire goodwill in the colour used for a product or for it packaging to the extent that use of the same or similar colour by others would lead to "a misrepresentation as to trade origin". However, it said that it is "difficult, although not impossible" for brand owners to demonstrate that the colour of a product or packaging is "distinctive of them".

The High Court ruled against Glaxo after considering the evidence the company had put forward to support its claims that purple was distinctive of its inhaler.

The court found flaws in the surveys Glaxo had carried out. It said the surveys did not conform to all of the guidelines courts in England and Wales have established in relation to the reliance that can be placed on survey evidence. The court said the surveys did not show that patients regarded the colour purple as being distinctive of inhalers having a particular trade origin, or as being distinctive of inhalers having specific characteristics.

The court also found fault with the evidence Glaxo presented in relation to Sandoz's alleged recklessness.

Lord Justice Arnold, the judge in the case, was satisfied that there was a good reason for Sandoz choosing purple – it denoted the active ingredients of the inhaler so that patients could distinguish between the various inhalers they had and use the correct one. He recognised that there is a colour convention in the sector around inhaler types and concluded that use of the colour purple denoted the active ingredients and nothing else. 

Iain Connor said: "Any company wanting to prevent look‑a‑likes is going to have to look very carefully at its evidence especially if it has allowed its colour designation to become the category cue for a particular product, such as red for cola or ready salted crisps. Having said that, the ruling is helpful in making clear that provided the evidence is there, reputation in a colour alone can form the basis of a passing off action. For companies, this means that they will have to plan their product launches with military precision and prevent any potential free-riding from day one."