Glaxo Wellcome UK Ltd (T/A Allen & Hanburys) and Another v Sandoz Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 15 December 2017 |
| Neutral Citation | [2017] EWHC 3196 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2015-005005 |
| Date | 15 December 2017 |
[2017] EWHC 3196 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Royal Courts of Justice
Strand, London, WC2A 2LL
THE HON. Mr Justice Birss
Case No: HC-2015-005005
Simon Malynicz QC and Alaina Newnes (instructed by Stephenson Harwood LLP) for the Claimants
Martin Howe QC and Iona Berkeley (instructed by White & Case LLP) for the Defendants
Hearing dates: 29 November 2017
Judgment Approved
This is an application by the claimants for permission to adduce survey evidence in passing off proceedings arising out of the colour and get-up of "Seretide" combination inhalers. Seretide is a product used by patients for the treatment of asthma and chronic obstructive pulmonary disease ("COPD"). It consists of a combination of two drugs, a long-acting ß-agonist called salmeterol and an inhaled corticosteroid called fluticasone. The Seretide combination is delivered in two different forms of combination inhaler – an MDI (metered dose inhaler) called "Evohaler" and a DPI (dry powder inhaler) called "Accuhaler". The distinction between these two forms of combination inhaler does not matter, nor does the fact that the name "Seretide" really refers to the drug combination rather than the inhaler device.
Seretide is said to be the first combination inhaler to be launched in the market. It is used twice daily by patients to control asthma or COPD and prevent an attack.
The claimants argue that the Seretide inhalers are sold in a get-up and packaging distinctive of the claimants and they are owners of significant goodwill not only associated with the name SERETIDE but with get-ups and packaging.
The claimants' pleaded case refers to various features or "indicia" of the get-up they rely on. One of the features is the purple colour(s) used on the products themselves and on packaging. In fact two shades of purple appear on some of the claimants' packs and in the marketing material (hence "colour(s)") but it is clear that an important aspect of the claimants' passing off case relates to one of the shades of purples itself. That is the darker shade. The claimants call it the "main purple colour".
Members of the defendants' group have launched a generic version of Seretide in various EU Member States called AirFluSal. It contains the same active ingredients as Seretide. AirFluSal is sold in a purple inhaler (called Forspiro) and has been sold by reference to a purple colour in the packaging. The claimants contend that the defendants are engaged in passing off. The first defendant is alleged to make a misrepresentation as to the trade origin of the product caused by the get-up, appearance, colour, livery etc. and the other defendants are alleged to be liable as joint-tortfeasors. The claimants also argue that the defendants' acts have been deliberate. A further alleged misrepresentation relied on, not germane to this application, is as to the equivalence of AirFluSal to Seretide. That is a point about the scope of marketing authorisations.
Before me there was some debate about the scope of the allegation of passing off and in particular whether the claimants were relying on the use of the colour purple itself and on its own as a feature in which they have goodwill and as something the use of which amounts to passing off. The short answer is that the claimants do indeed advance that case. Moreover the defendants understand this, as can be seen from a letter to the UK IPO dated 13 th December 2016 in parallel opposition proceedings concerning an application by the claimants to register a purple colour mark in the United Kingdom (Application No. 3108001, opposition now stayed pending this case). The defendants' solicitors made the following point about the issues in this High Court action:
"Although other indicia are also relied upon, the claimants' primary focus is on their use of purple (see section [in the Amended Particulars of Claim] headed "The use of purple for inhalers", […]), and further it is clear that the claimants assert that the use of the colour purple as such (i.e. leaving aside the other alleged indicia) is sufficient to amount to passing off ([…])."
That is an accurate statement of what the claimants' case is. There was some debate about the wording of the pleadings before me but a further amendment to the Particulars of Claim, not opposed, puts the matter beyond doubt.
The defendants deny passing off, including the allegation of intention. There is no need to summarise the entirety of the defendants' case, but it includes a denial that the purple shade (or any colour) is distinctive of the trade origin of the goods as well as a denial that their use of a purple colour makes a misrepresentation.
A particular feature of the defendants' case is a positive allegation that in the relevant market, colour has a particular meaning. It is said to be a reference to the type of medicine, so pale blue indicates a short acting ß-2 agonist reliever product, brown/orange/burgundy represents a corticosteroid preventer product and purple (or more particularly two tone purple as used with Seretide) indicates a combination product. The claimants deny that these colours in general, and purple in particular, have this meaning.
Another particular feature of this case is that the market is a specialised one. Members of the general public do not select these products to buy because the products are sold on prescription. The relevant persons with whom the claimants would have goodwill and to whom the alleged misrepresentation is made are doctors and pharmacists. Given the nature of the prescribing the doctors will usually be GPs. The pharmacists may include pharmacy technical assistants (PTAs). Patients may have a role to play but it is clear that this case will involve a significant focus on doctors and pharmacists.
The survey evidence that the claimants seek to adduce was originally carried out to support acquired distinctiveness of the main purple shade on Seretide inhalers, Pantone 2587C. That is the subject of the pending UK trade mark application. This survey evidence was previously admitted into the UKIPO opposition proceedings by the hearing officer, Mr George Salthouse, following objections by defendants. Before they were stayed the opposition proceedings were well advanced. The evidence was complete and both sides had filed evidence about the surveys.
Once the opposition proceedings were stayed and it became clear that the passing off claim would come first, the claimants applied to be permitted to rely on the survey evidence in these proceedings. Normally on applications of this kind today, the main survey has not yet been carried out but in this case all the survey work has been done because of the history described.
The material is in two parts. The first survey exercise was carried out in 2015. In one survey 200 GPs were interviewed and in the other 200 pharmacists (including PTAs). The second survey exercise was carried out in 2016. Again one survey was with GPs (251) and the other with pharmacists (including PTAs), numbering 252. In all surveys the core of the survey involves putting a blank rectangle of the relevant purple colour shade to the interviewees and asking questions. The claimants say the results support their case on distinctiveness.
The 2015 survey used a method commonly used in a number of Continental courts (such as Germany, Austria, Swiss and Benelux) as well as the EUIPO. About 93%/92% of pharmacists/GPs respectively had seen the colour on an inhaler while the remaining 7%/8% said it looked familiar. Of these over 90% of both considered it indicated the origin of one pharmaceutical company and 90%/88.5% of pharmacists/GPs respectively indicated that was the claimants. In what the claimants say is a verbatim record of answers to the questions, the claimants rely on particular answers which indicate, the claimants contend, a high degree of conviction that this colour is a brand colour, exclusively associated with the claimants.
The 2016 survey used a method that closely follows the method designed for and approved by the court (Morgan J on permission and later Arnold J at trial) in ( Enterprise v Europcar [2014] ETMR 50 and [2015] FSR 22). Once the purple colour was shown 7% of pharmacists and 5% of GPs mentioned GSK/Seretide before any questions were asked. In response to later questions 63.9%/75.7% of pharmacists/GPs respectively said they had seen the colour on Seretide, and many people, when asked if there was anything else they could tell the interviewer about the colour in relation to inhalers gave answers which the claimants contend support the idea that the colour is a "brand" (such as by saying the colour is a brand).
The conduct of all the surveys was overseen by Dr Pflüger, a well known German survey expert.
The claimants wish to use these surveys to support their case on distinctiveness. They do not seek to use the surveys as confusion surveys. Nor are the surveys being used as witness collection programmes, although the claimants do plan to call some GPs and pharmacists, those witnesses were not identified in these surveys.
The defendants oppose this application. The claimants contend that the survey evidence is of very limited value, based on an artificial premise and also is of minimal relevance to the actual passing off claim.
Although the parties had already exchanged expert evidence about the surveys in the opposition proceedings and the matter was ready to be decided, further evidence was served on this application. In particular the defendant...
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Glaxo Wellcome UK Ltd v Sandoz Ltd
...29 November 2017. He granted Glaxo permission to rely upon the surveys for the reasons he gave in a judgment dated 15 December 2017 ( [2017] EWHC 3196 (Ch)). By an order dated 20 December 2017 he gave the parties permission to rely upon all the existing reports and upon oral expert evidenc......