The Trade Mark Significance of Colour for Pharmaceuticals

The Trade Mark Significance of Colour for Pharmaceuticals Adrian Smith Partner Simmons & Simmons LLP 2 October 2015

Outline Significance of Colour: For Brands For Pharmaceuticals For Trade Marks Relevance of Design Protection Approaches to TM protection re colours 1 / L_LIVE_EMEA1:28591513v1

What s the Significance of Colour? 2 / L_LIVE_EMEA1:28591513v1

What s the Significance of Colour? 3 / L_LIVE_EMEA1:28591513v1

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 4 / L_LIVE_EMEA1:28591513v1

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 5 / L_LIVE_EMEA1:28591513v1

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). 6 / L_LIVE_EMEA1:28591513v1

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 7 / L_LIVE_EMEA1:28591513v1

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 8 / L_LIVE_EMEA1:28591513v1

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 9 / L_LIVE_EMEA1:28591513v1

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 10 / L_LIVE_EMEA1:28591513v1

Approaches to TM protection for colours: CTM 10730117 Class 5 (Dietary Supplements) ProMera Health LLC 11 / L_LIVE_EMEA1:28591513v1

CTM 10730117 Class 5 (Dietary Supplements) ProMera Health LLC 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. 12 / L_LIVE_EMEA1:28591513v1

This mark is also classed as a colour mark on the register CTM 6431555 Class 5 Biofarma Is it a colour mark though? 14 / L_LIVE_EMEA1:28591513v1

Why are these labelled colour marks? CTM 6985791 Classes 3, 5, 10 LRC Products, Blue, White CTM 13663356 Classes 5, 10 Actavis Group PTC ehf, Light Green 15 / L_LIVE_EMEA1:28591513v1

The answer may lie in Specsavers v. ASDA: What protection does a Black & White TM give? 16 / L_LIVE_EMEA1:28591513v1

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) 17 / L_LIVE_EMEA1:28591513v1

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. 18 / L_LIVE_EMEA1:28591513v1

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 19 / L_LIVE_EMEA1:28591513v1

For even broader protection, however, companies may try to get even more pure colour trade marks, just indicating the colour(s) themselves, e.g: 20 / L_LIVE_EMEA1:28591513v1

CTM 3757267 Classes 5, 29, 30 Verla Pharm Registered, inter alia, for pharmaceutical preparations Yellow Pantone 121 CV, blue Pantone 313 CV 21 / L_LIVE_EMEA1:28591513v1

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? 22 / L_LIVE_EMEA1:28591513v1

Another example: CTM 445270 Class 5 Eli Lilly and Company Anti-depressants, in capsule form, containing fluoxetine hydrochloride (Prozac ) 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). 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 23 / L_LIVE_EMEA1:28591513v1

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. 24 / L_LIVE_EMEA1:28591513v1

CTM 11949153 Class 5 Novartis AG Position mark 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.) 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. 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. 25 / L_LIVE_EMEA1:28591513v1

Single Colour Marks 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 26 / L_LIVE_EMEA1:28591513v1

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Chocolate 28 / L_LIVE_EMEA1:28591513v1

Application TM (UK) 2 376 879 Classes 29, 30 Cadbury s Refused! Believed registered in Australia though 29 / L_LIVE_EMEA1:28591513v1

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Telecommunications 31 / L_LIVE_EMEA1:28591513v1

CTM 212787 Deutsche Telecom Classes 28 & 32 Magenta Opposition was withdrawn 32 / L_LIVE_EMEA1:28591513v1

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 33 / L_LIVE_EMEA1:28591513v1

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 34 / L_LIVE_EMEA1:28591513v1

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) 35 / L_LIVE_EMEA1:28591513v1

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: 36 / L_LIVE_EMEA1:28591513v1

Whereas it should have been shown as: 38 / L_LIVE_EMEA1:28591513v1

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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 40 / L_LIVE_EMEA1:28591513v1

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 Registered, but with cancellation pending (Metoxit) Pink ("Pantone 677 C", 2010 edition) 41 / L_LIVE_EMEA1:28591513v1

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 42 / L_LIVE_EMEA1:28591513v1

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 43 / L_LIVE_EMEA1:28591513v1

simmons-simmons.com elexica.com 44 / L_LIVE_EMEA1:28591513v1