GSK settles TM suit over dry-mouth product

GSK has entered into a settlement agreement with California-based Laclede, ending a trademark infringement dispute between the pair.

On Friday, May 24, the US District Court for the Southern District of New York issued its final judgment on consent, two days after GSK and Laclede (which develops and makes oral care, ear and feminine hygiene products) entered into a settlement agreement.

In 2008, GSK paid approximately $170 million to Laclede for the IP, formulae, and goodwill relating to over-the-counter products used for the treatment of dry-mouth under the ‘Biotene’ trademark.

Before filing its lawsuit, GSK learnt that Laclede had launched a range of Salivea products, which competes directly with the Biotene line.

“Multiple health care professionals have reported to GSK that they were deceived by mailers into believing that Salivea is somehow approved sponsored by, or otherwise connected to, the makers of Biotene, or that Salivea is a successor to and has replaced Biotene,” said the claim.

GSK warned: “It is imperative that prompt action be taken to remedy the rampant confusion being caused in the marketplace.”

In January 2019, District Judge Jesse Furman stopped Laclede from featuring GSK’s ‘Biotene’ trademark in advertising for its competing treatments but allowed Laclede to keep its products on the market. Furman also denied Laclede’s attempt to dismiss the suit.

Since then, the parties have come to an agreement.

In its final judgment on consent, the court decreed that Laclede was restrained from making any use of the ‘Biotene’ trademark and logo, and from using any images of the Biotene line of products.

Under the agreement, Laclede isn’t allowed to make statements such as “#1 Brand for Dry Mouth” in connection with the packaging and advertising of its goods.

The injunction is limited to Laclede’s commercial advertising and promotional activities—Michael Pellico (one of Laclede’s shareholders) is allowed to make reference to his prior work with and development of the Biotene line at lectures, seminars and meetings of cancer patients, other than for purposes of marketing Salivea.

Laclede is also allowed to make claims such as “Salivea is superior to Biotene”, as long as the claims are not proven either false or insufficiently substantiated by reliable scientific evidence.

A GSK spokesperson said: “We are pleased that this matter has been appropriately concluded through a consent judgment that preserves the brand integrity and reputation of our Biotene dry mouth products.”

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