GSK sues Chinese company over Advair Diskus TMs
Pharmaceutical company GSK has taken a Chinese company to court over its alleged “deliberate and unlawful campaign” to copy GSK’s trademarks.
In a lawsuit filed yesterday, March 25, at the US District Court for the Southern District of New York, GSK and ViiV Healthcare (a joint venture between GSK and Pfizer) alleged that Respirent Pharmaceuticals is unlawfully using their trademarks on inhalers.
“This case arises from Respirent’s deliberate and unlawful campaign to copy GSK’s and ViiV’s federally registered trademarks, usurp their goodwill, and derive illicit revenue by confusing patients, doctors, and pharmacists,” said the claim.
Respirent is reportedly copying GSK’s Advair Diskus (fluticasone propionate), a respiratory inhaler that combines two different active ingredients to treat asthma and chronic obstructive pulmonary disease.
The inhaler is a distinctive purple, with a disk-shaped design—both the shape and colour are registered trademarks.
According to GSK, instead of competing fairly in the market with its own products, Respirent has “launched a campaign” to copy GSK’s IP.
“In or around July 2018, Respirent filed 39 trademark applications with the US Patent and Trademark Office (USPTO) for marks that Respirent claims it is using in connection with inhalers that look virtually identical to the Advair Diskus,” added the suit.
GSK went on to further allege that Respirent was “not content to merely copy” the trade dress of its inhaler, but has also decided to use names that are confusingly similar to GSK’s and ViiV’s trademarks.
Respirent has filed six applications for ‘Combovair’ and ‘Combivair’, trademarks which GSK deems are confusingly similar to ‘Advair’, the name of the inhaler, and to ‘Combivir’, a HIV medication sold by ViiV.
“As a potential generic copy of Advair Diskus, there is no question that Respirent would be fully aware of the Advair marks,” added the claim.
GSK concluded: “GSK and ViiV welcome robust competition in the pharmaceutical industry. But in this industry—where patient lives are at stake—GSK and ViiV insist that such competition be fair and not based on confusing patients and their doctors and pharmacists.”
On the subject of jurisdiction, trademark filings state that Respirent is based in Chongqing, China.
But GSK has claimed that Respirent has sufficient contacts with the US because the Chinese company has “purposefully” availed itself of the benefits of federal trademark law by
seeking to register dozens of trademarks at the USPTO and, “according to Respirent’s sworn representations to the USPTO, by placing its infringing products in US commerce”.
GSK is seeking a preliminary and permanent injunction against Respirent, an order for the company to dispel any confusion through efforts such as corrective advertising, and a recall of any infringing packaging.
The pharmaceutical company has also requested cancellation of Respirent’s trademark applications, triple damages, punitive damages and profits.
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