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19 May 2022Big PharmaAlex Baldwin

Roche and Bluebird settle ‘Spark’ TM suit

Roche subsidiary Spark Therapeutics has settled a lawsuit with rival gene-therapy company Bluebird Bio, which it had accused of infringing its “Spark” trademarks when marketing treatment for sickle-cell disease.

Spark Therapeutics initially filed a lawsuit in the US District Court for the District of Delaware in May 2021 and asked the court to bar Bluebird from continuing to use “Spark” while the lawsuit progressed.

But in January this year, the Delaware court denied Spark’s bid for a preliminary injunction to block Bluebird from using the word in its marketing campaign.

Now, both companies have agreed to settle the lawsuit, notifying the court with a short stipulation of dismissal on Monday, May 16.

The stipulation itself gives little detail on the agreement and has yet to be approved by circuit judge William Bryson who has been assigned to the case.

In Spark Therapeutic’s complaint, the company flagged Bluebird’s potential misappropriation of its “Spark” mark in several educational and informational campaign materials for the sickle-cell treatment, as well as an attempt by Bluebird to file its own “Spark” trademarks.

The complaint claimed: “Bluebird is actively using catchphrases such as ‘be the spark,’ ‘let’s spark change in sickle cell,’ ‘sign up to be the spark,’ and ‘be the spark for better care in sickle cell’ on its website and various other marketing materials.”

Bluebird also attempted to file trademarks for the phrases “be the spark”, “I am the spark”, “spark change”, and “spark action”, and owned the domain name sparksicklecellchange.com at the time of the complaint’s filing in May last year.

While Spark Therapeutics is mainly associated with haemophilia gene-therapy treatments, it argued that it would be “reasonable” for consumers to think that Spark was expanding into sick-cell anaemia as gene-therapy is considered a “promising field” for sick-cell anaemia treatment

Bluebird bio hit back with a counterclaim in July last year, claiming that the  lawsuit was “misguided” and went against Spark Therapeutics’ stated mission to combat systematic racism.

According to Bluebird, the infringement suit could potentially harm African Americans, which it said were at a much higher risk of experiencing the disease than any other racial group.

It also said that the word “spark” could be construed as a noun or verb with several meanings and pointed toward the word being used in more than 1,000 live US trademark registrations.

Almost a year later, the two companies have filed joint stipulation of dismissal to drop all claims and counterclaims. Each party will bear their own costs.

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