Purple Concept Rejected – No unjust enrichment and no passing off

Dexon makes a popular birth control pill, Feminet. For a brief period in 2007 when it was forbidden to advertise prescription medicines, Dexon ran an advertising campaign for ‘the purple pill’. After that period, the law was tightened and this was also forbidden.

In 2008, the Israel Defence Forces held a tender for birth control pills for young women, which army doctors prescribe on request without charge.

Bayer markets a birth control pill called Meliane at a higher price, but it is against their policy to discount their products, so they offered to provide the same birth control pill under a different name, Lodene, under which it is marketed in South Africa, and won the tender.

Dexon attempted to obtain a preliminary injunction against Bayer. Since Feminet is known as the purple pill, Dexon claimed rights in the concept of the purple pill. Since the packaging of Lodene was purple, and the blister packs were purple, Dexon accused Bayer of passing Off and Unjust Enrichment

Bayer responded that women generally asked for ‘the pill’ not the purple pill or a specific pill. Furthermore, the army only stocked one type. Many pill packages aimed at female patients, including competing birth control pills, were packaged in pink and purple shades as these were considered feminine colours.

The request for an injunction was turned down on the grounds that the plaintiff had a weak case. The case has now been heard in its entirely, and the court has ruled that there is no such thing as rights in the ‘concept’ of a colour. Whilst acknowedging that it is possible, in extreme circumstances, to register a single colour as a trademark, giving the example of Kodak’s trademark yellow for packages of films, the court ruled that this is the exception and not the rule, and noted that there is only a limited number of colours in the spectrum, and were manufacturers able to obtain proprietary rights to a colour in all its shades, for packaging a product, a small number of manufacturers would be able to prevent anyone else form selling their products in anything other than a plane white package.

Lodene’s purple packaging is different from that of Feminet, and the box is a different shape.  There is no similarity in the colour, no passing off, and anyway the pills were only obtainable by prescription, so the packaging is largely irrelevant. Women were expected to ask the doctor for ‘the pill’ not for the ‘purple pill’ and would be expected to leave it to the doctor to decide which pill to prescribe. Anyway, the army only stocked one type, so army doctors could not reasonably be influenced to provide the wrong low hormone contraceptive pill. Although Dexon had attempted to gain recognition for the purple pill, it was far from clear that they had succeeded in so doing.  The court concluded that beyond the semantics of the concept of the purple color, this case was simply an attempt to gain a monopoly on all shades of purple for packaging birth control pills, and was a misuse IP rights to prevent legitimate competition.  The case was dismissed and the plaintiff, Dexon, ordered to pay NIS 50,000 + NIS 150,000 costs.

T.A. 1242/08 Dexon LTD vs. Agis Trade Agency and Bayer Schering Pharma, 3 June 2012.

COMMENT

It seems like the court is correct in this case. Dexon has no rights to the concept of the purple pill, and Bayer are anyway not selling purple pills. It is unlikely that the IDF could care less what colour is used in the packaging for birth control pills, and , I suspect, female soldiers aren’t that bothered either.

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