Passing off: shades of purple

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    Competitor’s use of colour purple for asthma inhalers not passing off (High Court)

    The High Court has dismissed an action for passing off arising from the use of the colour purple for asthma inhalers.

    The claimant claimed goodwill in several shades of purple which it used for different inhalers. Much of its case on goodwill was based on four surveys of GPs and pharmacists. Arnold J examined the surveys to determine whether they complied with the Whitford Guidelines and concluded that they fell short in respect of several of them, rendering two surveys of no value and the others of limited value.

    As to misrepresentation, the claimant alleged that:

    • The defendant’s get-up misrepresented its trade origin to patients. There was no evidence of this. The inhalers could not lawfully be marketed directly to patients, and patients viewed the purple colour merely as indicating an inhaler with a particular active ingredient.
    • Its goodwill was damaged by the defendant representing that its inhaler was equivalent to the claimant’s. The judge noted that the claimant’s and defendant’s products had different names, packaging, shapes and colours (both in terms of shade and configuration) and that the mechanisms and the modes of operation of the two devices were radically different. Even the claimant’s own trade witnesses were clear that they would not make any assumption about the marketing authorisations of inhalers based on their colour. The evidence supported the defendant’s case that the use of the colour purple on its product would be perceived by healthcare professionals and patients as indicating the combination of active ingredients it contained. The proposition that prescribers would be misled by the colour of the defendant’s product into thinking that it was suitable for patients with mild or moderate asthma was fanciful.

    As to recklessness, the judge considered it obvious that the defendant did not deliberately seek to make its product as similar as possible to that of the claimant, as the only similarity was the colour.

    The judge also dismissed a claim for joint liability against two other parties, as they were not responsible for taking relevant regulatory decisions on behalf of the defendant in the UK.

    Case: Glaxo Welcome Limited v Sandoz Limited [2019 ]EWHC 2545 (Ch) (4 October 2019) (Arnold J).

    Practical Law 11.10.19