Sandoz Purple leaves Glaxo Blue

Surveys fail to persuade High Court of passing off.

Background

GlaxoSmithKline has sold a purple seretide inhaler since 1999 (seretide is a drug for treating asthma). Until 2015 these were the only purple inhalers on the market. After Glaxo's patent expired, Sandoz Ltd. released a generic alternative, also coloured purple. Glaxo originally brought a claim against Sandoz for trade mark infringement, but switched to passing off when its trade mark was revoked.

The test for passing off has three elements. The claimant must show:

• Goodwill or reputation in the goods/services;
• Misrepresentation by the defendant likely to lead the public to believe that the defendant's goods/services are those of the claimant; and
• Damage to the claimant caused by that misrepresentation.

Glaxo claimed goodwill in the purple colour of its inhaler, citing high sales over a number of years. It argued that Sandoz's use of purple was a misrepresentation, leading patients to believe that Sandoz's inhaler was a Glaxo product (misrepresentation as to trade origin); and leading healthcare professionals / patients to believe the Sandoz inhaler would provide the same treatment in terms of dose and delivery mechanism (misrepresentation as to equivalence). Glaxo claimed resulting damage to its goodwill. 

Glaxo applied to adduce four surveys (two from 2015 and two from 2016) to support its case on goodwill. Since Interflora it has become increasingly difficult to adduce surveys. The judge must be satisfied that the evidence is likely to be of real value, and that the value will override the costs. A significant part of this lies in complying with the Whitford guidelines on how to conduct surveys.

Decision of the High Court

Application

Glaxo succeeded in getting permission to adduce its surveys. 

A major issue was the three-step method used in the 2015 surveys. These began with two open questions, for example "Have you seen this colour used on an inhaler?" Those who answered yes were asked if purple inhalers come from a particular pharmaceutical company, a number of different companies or if purple told them nothing about the company. Those who answered "a particular pharmaceutical company" were asked for a name or brand. 

The judge hearing the application recognised an element of speculation in the questions. Nevertheless, he noted that this method was widely used in European courts and felt the trial judge could find "some assistance" in the answers. The judge found no serious problems with the 2016 surveys. Though admitting the surveys would result in substantial costs, he deemed this was justified by the high value of the dispute.

Trial

By contrast, the trial judge was highly critical of the surveys. He found that the 2015 survey questions were leading. The first step was undermined by a preceding question, where subjects were asked what came to mind when they saw purple in connection with inhalers. The judge found the second step "both leading and misleading". Even though it provided different options, it still planted the suggestion that the colour may indicate trade origin. It was misleading because at the time only Glaxo was offering purple inhalers, and so the colour could not indicate a number of companies. The 2016 surveys were of greater value. Questions 1-3 were found to be open in their wording, though the fourth question, which asked how patients 'typically' refer to purple inhalers, was too vague to be of value.

Stepping back from the detail of the questions, Glaxo's case was seriously undermined by the fact that no patients were consulted, and none of the questions dealt with misrepresentation as to equivalence. All the surveys showed was that healthcare professionals associated purple with a seretide inhaler, but not any particular company, nor a particular dose or delivery mechanism. There was no evidence that patients made these connections either. Even if the surveys had fully complied with the Whitford guidelines, they would not have supported Glaxo's claim to goodwill. 

Ultimately, Glaxo failed to prove its claims.

Conclusion

To succeed on a passing off claim, it is not enough to show that the relevant public is drawn to a particular product feature. That feature must indicate the company's identity, or the specific way the product works. 

Surveys may seem like a natural way of proving these elements, but they can run into serious difficulties. Much care is required to satisfy the Whitford guidelines, especially on avoiding leading questions. An overarching problem is that interviewees can see surveys as a quiz, where they try to double-guess what answer is being sought. If you do opt for surveys, tailor them to specific submissions. 

High Court judgement in Glaxo Wellcome UK Limited and Anor v Sandoz Limited and Ors [2019] EWHC 2545