Can a trademark for a colour combination for inhalers prevent the use of a single colour?

One way of trademark protecting a product is, of course, by trademark protecting the (3D) form of the product itself, but another option could be to protect a product’s appearance is by way of a obtaining a color per se trademarks. Single colour trademarks may, however, be difficult to obtain since a colour in itself is generally held to distinctiveness as a trademark.

Horten represented Sandoz in recent preliminary injunction proceedings against GlaxoSmithKline in relation to a colour combination trademark registered for inhalers. The parties disagreed, inter alia, on whether the protective scope of the trademark was limited to its application on the shape of inhaler shown in the graphical representation of the mark in the CTM registration.

GlaxoSmithKline (GSK) had been granted a CTM colour per se for the combination of two purple colours (a dark and a light shade), which Sandoz argued was limited in protective scope to its applied to GSK’s characteristic Diskos® inhaler which was the one depicted in the registration. 

When Sandoz launched its own inhaler with a single shade of purple somewhat similar to one of the two purples shades making up the GSK trademark (the light shade of purple), GSK filed for an EU-wide preliminary injunction based on colour combination CTM, alternatively a national (Danish) injunction based on the Danish unfair competition rules. 

The Danish specialty court for trademarks (the Maritime & Commercial Court) rendered its decision on 8 October 2014 turning down GSK’s application for interim relief in its entirety.

Part of the court’s reasoning was that there was no basis for extending the protective scope of the invoked two colour combination mark to comprise the single colour use by Sandoz for the distinctly different form of inhaler used by Sandoz and that there were no legal grounds for disregarding the graphical representation of the CTM registration.

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Anders Valentin

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