Passing off: misrepresentation as to trade origin and equivalence

Summary

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

Background

The elements of the tort of passing off are:

• Goodwill or reputation attached to the relevant goods or services.
  
  
• A misrepresentation by the defendant to the public, leading or likely to lead the public to believe that its goods or services are those of the claimant.
  
• Resulting damage to the claimant (Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341).

Facts

Pharmaceutical company G claimed that a purple asthma inhaler produced by S from November 2015 had been passed off as being connected in the course of trade with G and as being equivalent to one of G's purple inhalers. G sued S for passing off.

S argued that in the UK pharmaceutical industry there had been informal but widely recognised colour conventions for inhalers, and it had chosen the colour purple as it was the signal colour for inhalers containing a combination of salmeterol and fluticasone.

S had previously obtained summary judgment in its counterclaim for invalidity in a trade mark infringement claim relating to the G's registered colour trade mark (www.practicallaw.com/w-008-7918).

Decision

The High Court dismissed G's passing off action.

G's claim for passing off by misrepresentation as to trade origin failed. The inhalers could not lawfully be marketed directly to patients, and patients viewed the purple colour merely as indicating an inhaler with particular active ingredients. There was no evidence that S's get-up misrepresented its trade origin to patients or that patients would make any assumptions as to the characteristics of S's inhaler based on its colour. Two of G's inhalers were marketed in broadly the same shades of purple yet differed in the way they delivered the medication to the patient and also differed in dosage. There was also no evidence of confusion among patients in the three and a half years since S launched its competitor inhaler despite substantial sales.

G's claim for passing off by misrepresentation as to equivalence between the products also failed. There was no evidence that G's goodwill was damaged by S representing that its inhaler was equivalent to G's. G and S's products had different names, packaging, shapes and colours both in terms of shade and configuration, and the mechanisms and the modes of operation of the two devices were different. Given the extensive sales of S's inhaler, the absence of any evidence of patient confusion as to equivalence confirmed that such confusion was wholly improbable.

There was no evidence that the colour purple was, among healthcare professionals in November 2015, distinctive of the characteristics of G’s inhaler. There was no evidence that healthcare professionals had been or were likely to have been confused as to the characteristics of S's inhaler due to the use of purple. First, the claim that the use of purple conveyed a misrepresentation that S's inhaler had the same mechanism for delivering the medication as G’s inhaler was inconsistent with G's own use of the same shades of purple for inhalers with different mechanisms. Second, the claim that the use of purple conveyed a misrepresentation that S's inhaler existed in three strengths like G’s inhaler was far-fetched. Anyone prescribing or dispensing S's inhaler would know that it came in a single strength. Third, the claim that the purple conveyed a misrepresentation that S's inhaler had the same extent of marketing authorisation as G’s inhaler was not made out. There was no misrepresentation causing damage to G's goodwill.

As to recklessness, S did not deliberately seek to make its product as similar as possible to G's, as the only similarity was the colour. There was nothing in S's state of mind at the time of developing and launching its inhaler that supported the claim of passing off. The evidence supported S's case that the use of the colour purple would be perceived by healthcare professionals and patients as indicating the combination of active ingredients that the inhaler contained.

Comment

Although G applied for and obtained permission to conduct survey evidence, it did not adduce any survey evidence from patients at trial. There was also no evidence of any actual confusion both as to trade origin or equivalence despite extensive product sales by S. 

An interesting feature of this case is that there was evidence, as a result of an informal colour coding convention in the industry, that health care professionals and patients had come to expect that a purple container would contain a specific combination of active ingredients. G did not accept that that such a convention had developed in respect of purple for salmeterol and fluticasone, although the other inhalers with this combination of active ingredients launched in the UK since 2015 all featured purple or pink elements. As a result S had legitimate reasons to select the colour purple. There was, however, no evidence that use of the colour purple denoted other product characteristics associated with G's goodwill, or indicated trade origin from G as manufacturer. Like most passing off actions, this case is highly fact-specific. It underlines the need to analyse carefully the particular nature of the goodwill, and to ask whether any aspects of get up and packaging denote trade origin or product characteristics, such that, if adopted by a competitor, they would be capable of misrepresentation causing damage to that goodwill.

Case: Glaxo Wellcome UK Ltd v Sandoz Ltd [2019] EWHC 2545 (Ch).

First published in the December issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.