AstraZeneca v. Dr. Reddy’s – Colour as a Pharmaceutical Trade Dress

“You take the blue pill and the story ends. You wake in your bed and believe whatever you want to believe. You take the red pill and you stay in Wonderland and I show you how deep the rabbit-hole goes.”

• Morpheus, The Matrix.

US-based pharma AstraZeneca had, not so long ago, filed a suit before a Delaware court against the purple colour of the generic version of AstraZenca’s antacid pill, Nexium, being sold by Dr. Reddy’s Laboratories in the US. This, it claims, is a significant breach of a settlement arrived at between the two companies that would discharge Dr. Reddy’s from any liability in connection with the generic Nexium’s sale. AstraZeneca alleged that the shade of purple used was similar to the shade of the original pills, effectively infringing on their trademark for their purple pills. The Court granted a temporary injunction in favour of AstraZeneca, imposing a temporary ban on the sale of Dr. Reddy’s generic pills. In a recent development, it appears that Dr. Reddy’s has countersued AstraZenca in a New Jersey Court claiming that its actions were perfectly in line with the terms of an earlier settlement in 2011, where the former’s intention to use the colour purple had allegedly been made fully known.

In order to emerge triumphant, it is necessary for AstraZeneca to show distinctiveness and that the likelihood of consumer confusion exists. But it is questionable as to whether the purple colour of AstraZeneca’s purple pill been etched so deep into the minds of consumers so as to facilitate its differentiation purely on the basis of colour- despite the $250 million it claims to spend on an annual basis marketing the purple in the pills. Further, AstraZeneca would also have to show the likelihood of consumer confusion as regards the source of the pill itself – the confusion here being by virtue of the purple in Dr. Reddy’s generic version of the pills being wrongly suggestive of the existence of a relationship between the two companies. This however, seems doubtful, largely because Nexium is a prescription drug, and the purchase is made, I would think, placing reliance only on the label denoting the name by which the pill is sold and nothing else.

The general trend in foreign jurisdictions is to disallow the registration of single colour marks. In the UK for instance, although the House of Lords in the Smith Kline case recognized the external appearance of the capsule as a colour mark, pharmaceutical trade dresses have repeatedly fail to fulfill the requirements of the two tests.

In India too, colour marks aren’t easily registrable – and if you’re looking to register a single colour as a colour mark, well, your job gets harder. While the Trade Marks Act does not expressly prohibit the registration of single colour marks, establishing distinctiveness in a single colour is no easy feat unless the colour, by virtue of a long standing association with a particular mark, has come to represent the source/origin of the product, whose unique distinctiveness enables easy identification of the product from other products in the same class of goods.

Courts also tend to be apprehensive of allowing colour mark registration because they fear the depletion of the rather limited set of colours currently recognized – and in India, this isn’t necessarily restricted only to pharmaceuticals. Although Cadbury for instance, obtained a favourable decision in Nestle S.A v. Cadbury UK that allowed it register the royal purple colour famously identified with its ‘Dairy Milk’ chocolate, as a colour mark –an application for its registration before the Trademark Registry was rejected. While in Colgate Palmolive Company v Anchor Health and Beauty Care Pvt Ltd the Delhi HC acknowledged that even a single colour may be registered as a mark, the Court in Cipla Limited vs M.K. Pharmaceuticals, made a diametrically opposite assertion that monopoly over colours cannot be claimed. On the question of colour marks for pharmaceuticals, the Court stated –

“The medicines are not bought by colours by the customers. There are thousand types of tablets available with Chemist for different ailments. No one goes to a chemist and asks for red, blue, orange, peach or white colour of tablets. All medicines are purchased at the advise of Doctors and they are sold on prescription. Even those tablets readily available without prescription, are known by their names……….The distinctiveness of the medicines is in the name and not in the colour and shape”.

It seems relatively easy to speculate that if this legal duel had been fought in India, the ambiguity surrounding the subject of registrability of colour marks itself would hamper the possibility of any positive outcome in a case that discusses the more conservative question of registrability of colour marks in medication.

In order to get down to the nitty-gritties of this issue, it is perhaps necessary to also look into the question of whether the colour of a pill does at all impact the consumer’s choice of medication. And this, of course, bears relevance only when speaking of over-the-counter pills – the colour of prescription medication ought to have no implication on whether or not the consumer decides to buy it at all because the sale is not effected in the light of the usual buyer seller relationship that exists, where the consumer makes a choice based on his owns perceptions. It is the physician who makes the choice for the buyer – the buyer only follows the doctor’s prescription and purchases medication accordingly.

I recently read an interesting ColorMatters article by Jill Morton that spoke of the extensive market research carried out by GSK and Bayer back in 2002 before settling on the colour of the pill that would be the Pfizer produced Viagra’s biggest rival. This research apparently suggested that Viagra’s little blue pills didn’t appeal to consumers much because they equated the colour with sickness. This prompted Levitra’s people to put their heads together to sidestep what appeared to be a possible roadblock in their path to success – market research aimed at deciphering what colours allure consumers the best whilst matching the personality of the drug led them to a vibrant shade of orange. This forces me to wonder, if either of these companies decided to colour their pills pink, wouldn’t people’s general tendency to think of the shade as being too ‘feminine’ (throwback to that episode from Friends that had Monica jeering at Ross’ salmon coloured shirt) get in the way of reaching their target audience?

Another article shed some more is light on why appearance DOES matter even for pharmaceutical products, because an ordinary, round white pill will not survive in such a fiercely competitive environment. Yet another quotes Professor Bill Trombetta asserting that the colours used by pharmas are symbolic for what the pill trying to do – “wake people up, alert them, smack them, a cold slap in the face. Your jaw drops at all the things that go into it.”

A survey by the University of Mumbai to determine the extent of influence the colour of a pill has on the patient’s inclination to take the medication further strengthens this argument, revealing that that patients may refrain from taking medication of a specific colour where such colours are associated with specific ‘tastes’, because the patient’s perception of the pill can affect the effectiveness of the pill itself.

Let me use a hypothesis to emphasize this point further – imagine you’re in the midst of having the worst headache of all time, so you run to the pharmacist to grab one of those painkillers you hear everybody talking about. The man across the counter picks out two of his most popular sells, and lays them out before you – each a different colour. One red, and the other white. Which do you think you’re more likely to buy?

When you’re offered options, I can’t help ponder over the possible psychological associations between colour and effect. But this might perhaps be applicable only in the case of competing, but therapeutically equally effective alternatives are concerned – because colour may then assume a significant consideration governing consumer choice when there lies no other distinguishing element.

The recently emerging colour branding strategy adopted by pharma companies, besides possessing medical relevance, looks like a very smart move in an increasingly competitive market to ensure that the medication’s curative value isn’t the only factor that sustains its appeal. The question is, if AstraZeneca can actually produce evidence to meet the standards of the two tests discussed earlier, will its action for infringement against Dr. Reddy’s actually succeed?

Only time will tell. Meanwhile, we hear that in an effort to sidestep the implications of the ban, Dr. Reddy’s has notified the Delware Court that it plans on switching from purple to blue for its generic Nexium pills.

Imitation might be the sincerest form of flattery, but people sometimes forget that it can lead to an expensive lawsuit.