the trade mark significance of colour for pharmaceuticals · ctm 10730117 – class 5 (dietary...

The Trade Mark Significance of

Colour for Pharmaceuticals

Adrian Smith

Partner

Simmons & Simmons LLP

2 October 2015

© Simmons & Simmons LLP 2015. Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated partnerships and other entities.

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Outline

Significance of Colour:

– For Brands

– For Pharmaceuticals

– For Trade Marks

Relevance of Design Protection

Approaches to TM protection re colours


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What’s the Significance of Colour?


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What’s the Significance of Colour?


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Significance of Colour for Brands

The case law in the EU says that the word part of a composite mark will

generally dominate – but is this correct in practice?

Christian Scheier, Decode Marketingberatung

MARQUES Conference, September 2015

– Colours “strong diagnostic cues”

– Letters and words are slow markers (you have to read and

concentrate), and they are not easily visible from a distance

– Colours are more quickly understood than words


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Colour in Pharmaceuticals

As with other goods and services, colour can play an important role in

providing information on pharmaceutical products

Some studies have suggested that patients may have distinct

reactions to medications of different colours:

– Red medicines: strong, potent, and expected to be cardiovascular

– Blue medicines: tranquilising/healthy

– White medicines: general use/relatively weak

– Black medicines: strong

Similar studies have indicated that the colour of the packaging may

also affect how patients think a pharmaceutical product is going to

work


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Effects of Colour lead to safety issues and regulatory

restrictions, eg

The Human Medicines Regulations 2012, s.275

Restrictions on:

Colouring of aspirin and paracetamol products for children

– The sale or supply of a medicinal product containing aspirin or

paracetamol of any colour other than white is prohibited if—

– (a) it is a product for children aged 12 or under; and

– (b) in the case of paracetamol, it is in a solid form (including

tablets, capsules, pills, lozenges, pastilles or suppositories).


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Colour and Trade Marks

As we know, colours are protectable as trade marks in the EU –

Case C-104/01 Libertel

Early on there was concern as to how a colour would be represented

– a sample might degrade/fade – practice has at times been to rely

on Pantone® colour system

Even with Libertel, though, it can be quite difficult to protect colour

marks:

– Single colour marks have often been found to be banal and

devoid of distinctive character

– Marks of two (or more) colours can be protected provided their

form is fixed (examples later) – but in practice, it has been difficult

to validly protect “just two colours”


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Colour in Pharmaceuticals

In the EU, the number of CTMs designated as “colour marks” is not

large:

– Searching the register at OHIM there are 271 colour marks, 20 of

which are registered for Class 5, and 6 in Class 10


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Relevance of Design Protection

It should be remembered that protection may be sought under

design law as well as/instead of trade mark law.

Colour protectable at EU level explicitly in Article 3(a) of Regulation 6/2002,

– “lines, contours, colours, shape, texture and/or materials”

– Not perpetual protection (only up to 25 years for registered Community

designs, and 3 years for unregistered)

– Have to think about novelty as well as the design creating a different

overall impression on the informed user compared with earlier designs


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RCD 17454-0001, Pfizer Inc

Design doesn’t show any

colour

Unless indicated

otherwise, a design in

black and white gives

protection for all colours of

the design


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Approaches to TM protection for colours:

CTM 10730117 – Class 5 (Dietary Supplements) – ProMera Health LLC


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“The trade dress on dietary supplements consisting of the pattern of colors

and shapes consisting of a plurality of spaced-apart, laterally adjacent

parallelograms alternately colored black with yellow blotches, solid yellow, and

black with yellow speckles, wherein the parallelograms each have parallel,

vertically declined comparatively longer sides joining at their vertices parallel,

comparatively shorter horizontal bases, wherein the solid yellow

parallelograms are interleaved between the black parallelograms with yellow

blotches and the black parallelograms with yellow speckles, and wherein the

bases of the black parallelograms with yellow blotches are equal in extension

to the bases of the black parallelograms with yellow speckles and are

comparatively longer than the bases of the solid yellow parallelograms. The

colour black makes up 55% of the overall mark, with the colour yellow making

up 45% of the mark.”


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“The trade dress on dietary supplements consisting of the pattern of

colors and shapes consisting of a plurality of spaced-apart, laterally

adjacent parallelograms alternately colored black with yellow blotches,

solid yellow, and black with yellow speckles, wherein the parallelograms

each have parallel, vertically declined comparatively longer sides joining

at their vertices parallel, comparatively shorter horizontal bases, wherein

the solid yellow parallelograms are interleaved between the black

parallelograms with yellow blotches and the black parallelograms with

yellow speckles, and wherein the bases of the black parallelograms with

yellow blotches are equal in extension to the bases of the black

parallelograms with yellow speckles and are comparatively longer than

the bases of the solid yellow parallelograms. The colour black makes up

55% of the overall mark, with the colour yellow making up 45% of the

mark.”

Apparently used just on the packaging

The description is incredibly detailed

– Perhaps this trade mark could cover something similar to

the form depicted, but it is so carefully described it would

be difficult


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This mark is also classed as a “colour mark”

on the register… CTM 6431555 – Class 5 – Biofarma

Is it a colour mark

though?


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Why are these labelled colour marks?

CTM 13663356 – Classes 5,

10 – Actavis Group PTC ehf,

“Light Green”

CTM 6985791 –

Classes 3, 5, 10 –

LRC Products,

“Blue, White”


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The answer may lie in Specsavers v. ASDA:

What protection does a Black & White TM give?


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Specsavers v Asda

Colour relevant in assessing likelihood of confusion or unfair

advantage re a B&W mark

if

mark used extensively in that colour scheme and has become

associated with same in minds of significant proportion of

public

Advantage of B&W registrations appeared to be confirmed

Potential added possibility to rely on reputation in colour(s)


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CP4 – Common Practice (April 2014)

Concerns “identity” re:

– (a) relative-grounds oppositions

– (b) genuine use; and

– (c) priority

An earlier trade mark in B&W is not identical to the same mark

in colour unless the differences in colour are insignificant*.

An earlier trade mark in greyscale is not identical to the same

mark in colour, or in B&W unless the differences in the colours

or in the contrast of shades are insignificant*.

*An insignificant difference between two marks is a difference that

a reasonably observant consumer will perceive only upon side by

side examination of the marks.


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Specsavers, CP4 – Where are we?

B&W mark protection not as wide as previously understood

Some B&W registrations may be vulnerable re non-use

It now may be helpful for trade mark owners to have a

registration showing the colour of actual use (where it is a

distinctive element) – possibly as well as a black and white

filing


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For even broader protection, however, companies may try to

get even more “pure” colour trade marks, just indicating the

colour(s) themselves, e.g:


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CTM 3757267 – Classes 5, 29, 30 – Verla Pharm

Registered, inter

alia, for

pharmaceutical

preparations

Yellow Pantone 121

CV, blue Pantone

313 CV


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These “pure” colour marks – have been controversial

According to Sieckmann (C-273/00):

– “a trade mark may consist of a sign which is not in itself capable of

being perceived visually, provided that it can be represented

graphically, particularly by means of images, lines or characters, and

that the representation is clear, precise, self-contained, easily

accessible, intelligible, durable and objective.”

In Libertel it was held that the use of a Pantone® Number (or similar system) for

a colour mark would satisfy the Sieckmann test.

In the EU TM Reform Package, the requirement for a mark to be capable of

being represented graphically has been dropped

Will this make a difference in practice? e.g. re the scope of marks consisting of

two, or more, colours?


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Another example: CTM 445270 – Class 5 – Eli Lilly and

Company

“The mark consists of the colour

green applied to one half of a

solid pharmaceutical product in

oral dosage form, namely a

standard pharmaceutical

capsule, and the colour cream

applied to the other half of the

product, the colours being

applied respectively to opposite

ends of the product; the green

being a soft jade green

(Shionogi Colour reference 220)

and the cream being a soft

golden cream (Shionogi Colour

reference 83).”

Anti-depressants, in

capsule form,

containing fluoxetine

hydrochloride

(Prozac®)

This drafting convention of circles may

disclaim any length of the elements of the

mark – the yellow and green are not

restricted right and left


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CTM 11949153 (Application Refused) – Class 5 –

Novartis AG

“Position mark”

Description: “The trademark is a

position mark, consisting of two

parallel radial bands in yellow on the

lower part of a two-piece, hard

starch capsule. The upper part of the

two-piece, hard starch capsule has

the same colour as the two parallel

radial bands on the lower part.”


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CTM 11949153 – Class 5 – Novartis AG

“Position mark”

Description: “The trademark is a position mark,

consisting of two parallel radial bands in yellow on the

lower part of a two-piece, hard starch capsule. The

upper part of the two-piece, hard starch capsule has

the same colour as the two parallel radial bands on the

lower part.”

NB. since the white in the picture is not

claimed as ‘white’, it could be any colour

(though not the same yellow, as then the

bands would not be visible.)

Board of Appeal found to be invalid –

considered “upper” part of a

symmetrical tablet undefinable. Also

colours here considered “banal”, and

consumers would think pattern just a

design, not indicating origin.


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The pinnacle of colour mark protection is the single colour

mark.

But few colours are sufficiently distinctive on their own to

function as TMs or be registered

In specific fields, however, some are…

Single Colour Marks


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Chocolate


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Application TM (UK) 2 376 879 – Classes 29, 30 –

Cadbury’s

Refused!

Believed registered in

Australia though


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Telecommunications


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CTM 212787 – Deutsche Telecom – Classes 28 & 32

Magenta

Opposition

was withdrawn


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Nivea Blue – Pantone 280C

This mark was opposed by

Unilever at the German Patent

and Trade Mark Office, then on

appeal to the Federal Patent

Court, and finally up to the

Federal Supreme Court.

The case overlapped with one

about ‘Red’…

https://www.google.co.uk/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&cad=rja&uact=8&ved=0CAMQjRxqFQoTCOTElM_w3cYCFYNcFAod91QANw&url=https://commons.wikimedia.org/wiki/File:Blue_color_Pantone_280C.png&ei=sbWmVaSoBIO5UfepgbgD&psig=AFQjCNFRrribvAEjrA06xQiRuMmdDEItdA&ust=1437075249114873


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A relevant case of the Court of Justice…

Sparkasse v Santander and Oberbank (C-217/13 and C-218/13)

Deutsche Sparkassen- und

Giroverband had a German trade mark

for “Sparkasse red”

Santander and Oberbank both intended

to use red themselves, and tried to

clear the way to prevent Sparbank from

alleging infringement

In German proceedings before the

Federal Patent Court, it was suggested

that for a colour mark to be registered,

at least 75% of the public needed to

recognise it

Questions were referred to the CJEU


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Sparkasse v Santander and Oberbank (C-217/13 and C-218/13)

The Court of Justice rejected the ‘75%

of the public’ threshold as being too

high, stressing individual examination of

the mark

What the ‘correct’ or ‘permissible’

threshold is remains partly a question of

German law

This should remind us that because of

the low (no) inherent distinctiveness of

a colour, a high level of acquired

distinctiveness is needed (even if it is

not a precise percentage of the

population)


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Nivea Blue

By the time Nivea Blue reached

the German Supreme Court,

the Sparkasse case had

already been decided

The percentage of the public

which needed to recognise the

mark had been lowered (50%),

but the problem now was the

survey which had been used to

establish acquired

distinctiveness

The public had been shown:



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Whereas it should have been shown as:


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Beiersdorf (maker of Nivea Creme)

The Federal Supreme Court

thought that the white

background on the survey card

(even if small comparatively)

may have reminded the public

of Beiersdorf figurative mark,

used for Nivea Creme

This would have skewed the

survey in Beiersdorf’s favour,

and as such, a new survey

needed to be undertaken


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CTM 10214195 – Class 10 – CeramTec GmbH

Ceramic parts for implants for

osteosynthesis, articular surface

replacement, bone spacer blocks;

Hip joint balls, hip joint sockets and

parts for knee joints; All of the

aforesaid goods for sale to

manufacturers of implants

Pink ("Pantone® 677 C",

2010 edition)

Registered, but with cancellation

pending… (Metoxit)


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But careful not to be considered banal…

CTM 11388386

General Court Case T-144/14

EE Ltd v OHIM

“the combination of the specific

Pantone colour ivory No 9143

with white particles in a certain

infinite pattern’ is too banal to

enable the relevant public to

identify the commercial origin of

the goods and services at

issue.”

Acquired distinctiveness very

important


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Conclusion

Colour is an important and effective communicator in a range of ways

Colour has very strong branding significance in practice

Tension between significance and ability to protect colours as trade

marks

Variety of approaches to/levels of TM protection for colours

Questions re scope of protection/effect of B&W marks increases

potential importance of registrations in colour(s) of use.

Design protection also relevant

Keep pushing the boundaries and watch this space re any EU TM

Reform Package impact


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