Martin Howe QC, Iona Berkeley and Ashton Chantrielle appeared for the First to Fifth Defendants (‘Sandoz’) in this lengthy passing off trial, concerning the colour and get-up of the Claimants’ Seretide combination inhaler, an extremely successful prescription only medication.
The action was dismissed, and on 4th February 2020 the Court of Appeal (Floyd LJ) refused permission to appeal.
The two week trial held before Arnold J., as he then was, concerned the law of passing off in relation to get up and considered evidential issues concerning pharmaceutical regulation, prescribing and dispensing practices, the treatment of Asthma and COPD, patient training and detailed survey expert evidence.
As stated in the opening line of the judgment “This case is about the colour purple”. Since 1999 Glaxo have sold inhalers coloured in two tones of purple containing the active ingredients fluticasone and salmeterol under the name “Seretide Accuhaler” in the UK. Glaxo argued that the colour purple in general had become distinctive of it and denoted the trade origin of the inhalers. The Sandoz parties in late 2015 in the UK launched a generic salmeterol and fluticasone inhaler, under the name “AirFluSal Forspiro”. This differently shaped inhaler was coloured in a different shade of purple and white. Glaxo alleged that the Sandoz parties were liable for passing off with the sale of the AirFluSal Forspiro due to the inhaler and its packaging being partially purple in colouration. Glaxo put its claim for passing off in two ways that of deceptive confusion as to trade origin and also passing off as to equivalence, i.e. Glaxo asserted that the get up of the AirFLuSal Forspiro conveyed a misrepresentation as to equivalence with the Seretide Accuhaler on various different bases. Glaxo also sued the sixth and seventh Defendants (‘Vectura’) which designed the proprietary Forspiro inhaler. The Claimants as part of their claim also chose to put in issue the subjective intention of all the Defendants, alleging up until shortly before trial that Sandoz and Vectura had the deliberate intention to pass off, and at trial alleged that the Defendants were reckless as to passing off.
The Defendants denied all claims. All parties relied on extensive trade evidence from medical professionals such as respiratory consultants, general practitioners, respiratory nurseries and prescribing and dispensing pharmacists in relation to prescribing and dispensing practices and the use of colour on medical inhalers. Glaxo also relied on two surveys of doctors and two surveys of pharmacists which Glaxo alleged showed that a certain shade of purple had acquired distinctiveness for Seretide.
Lord Justice Arnold dismissed the Claim. His judgment contains a detailed consideration of the law of passing off, in particular with regards get up. He made detail factual findings that the Claimants had provided no evidence that Glaxo owned a protectable goodwill in relation to the colour purple such that patients would assume that any inhaler in a purple colour was an inhaler from the manufacturers of Seretide. The Court found, inter alia, insofar as patients relied on the colour, it was for ease of distinction between different inhalers having different functions. Further the Court found that there was no evidence of distinctiveness as to purple representing the characteristics of the Seretide products to either healthcare professionals or patients. In particular, the Judge also considered Glaxo’s survey evidence and found two of the surveys based on the European “Three Step Test” to be valueless and was critical of the other two surveys relied upon. In particular, the Judge found that none of the surveys demonstrated that the colour purple had been shown to have acquired distinctiveness rather than showing mere recognition. Further the Court found that Glaxo had provided no evidence of deceptive confusion at all.
The Judge also considered the Glaxo’s claim that the Defendants were reckless in adopting the colour purple. The Court entirely acquitted the Defendants of the charge of recklessness and held that there was nothing in the Defendants’ state of mind at the time of developing and launching the AirFluSal Forspiro that lent any support to the claim of passing off. The Judge found that the entire investigation into the Defendants’ state of mind had been a complete waste of time and money.
Two of the Sandoz Defendants denied joint tortfeasance and therefore the Judge also considered this area of the law and found that, even if Sandoz was liable for passing off these two Sandoz Defendants were not liable as they were not joint tortfeasors with the UK Defendant.