Following our post of 10 June 2016 on the ASPIRIN / SALOSPIR case in Greece, we were glad to receive some additional inside info, which unfortunately was not included in the judgment, but which shed further light to it. The information comes from our good Greek collegues Christos Chrissanthis and Xenia Chardalia who acted for the succesful defendant (appeal proceedings are available). This is what they write:
"Dear Mr. Prentoulis
We were glad to see your post on MARQUES Class 46 regarding the Greek ASPIRIN – SALOSPIR case. We believe this judgment is of considerable legal interest and it is indeed worth emphasizing the legal complications involved. Therefore, as we have been leading this litigation on behalf of the manufacturer of SALOSPIR, we would like to draw the attention of your readers on some factual and legal aspects of the case, which we believe are illuminating of the reasoning of the court judgment.
1. An important factual peculiarity of this case is that SALOSPIR is by itself a famous pharmaceutical trademark in Greece, as it is traded for about 40 years and is the leading anti-thrombotic in the local market.
2. Another fact that makes this case exceptional is that SALOSPIR has been traded as a pain reliever during the ‘80s in a green and white packaging (see attached photo) without any objection by any party.
3. There is strong scientific literature and other evidence that the green color causes specific mental associations and emotions to consumers; it is submitted that it causes a calming emotion and that it is closely associated with the idea of relief from pain. Pharmacies in Greece and other countries bear a green cross, operating rooms at painted in green colors, surgeons clothing is green, etc. in the mind of consumers the green color has always been associated with medicine.
4. There are many other pharmaceuticals traded in green and white packaging.
5. When one attempts to establish that a particular color or color combination is distinctive in itself and enjoys reputation as such (i.e. irrespective of the word marks accompanying it), they have to prove that consumers would recognize the particular product of the particular manufacturer from the colors of the packaging alone, even in the absence of any word mark. In simple terms, this would mean that anyone, who comes across a green and white packaging without any other word indications, has no doubt that it cannot be anything else other than ASPIRIN. Establishing something like this is particularly difficult as in principle consumers are not accustomed to perceive colors as indications of origin. Establishing distinctiveness on this basis may be impossible in cases where certain colors cause particular mental associations, or emotions, and are generic of particular sectors.
Readers might also be interested to know that the ASPIRIN – SALOSPIR case is also pending before the OHIM following an opposition to a CTM application for the SALOSPIR packaging.
Christos Chrissanthis & Xenia Chardalia"
Below is the submission before OHIM of a picture of the SALOSPIR's packaging in the 1980s, which Christos and Xenia were kind enough to forward us for the blog's readers.
Proof of longstanding concurrent use of the two marks would, in this blogger's mind, have significant implications in the civil proceedings and it seems it actually did, although the court did not have too much to say about that.
Let's see OHIM's take on the matter.