Executive Summary

SEARLE SPENT APPROXIMATELY 52 MIL. MARKETING BLUE FLAGYL (METRONIDAZOLEl tablets, the Illinois Federal Court noted in an Aug. 27 decision prohibiting Par from marketing blue generic metronidazole tablets. Federal Judge Charles Kocoras cited Searle's prornotional expenses as evidence that the color blue had achieved secondary meaning. The judge stated: "Searle submits that it has spent approximately $2 mil. on marketing since it introduced its blue Flagyl tablets in August 1982. It has provided to the court examples of advertisements which: explicitly refer to the brand identification function of the blue color of Searle's tablets." Kocoras commented that "whether Searle has succeeded in linking the color blue to its brand identification to such an extent as to achieve secondary meaning involves an analysis of several factors." He said Searle submitted "four categories of evidence which provide convincing evidence that Searle's blue tablets have achieved secondary meaning." The four categories of evidence cited by the court include: (1) Searle's extensive advertising and sales of its blue Flagyl tablets; (21 Searle's large sales force that promotes the blue color of Flagyl; (31 Searle's free patient starter kits which. contain three blue Flagyl tabs and advise patients to "make sure that the tablets you.get from your pharmacist look like these"; and (41 Par's intentional copying of Searle's trade dress. The court noted that after Searle's patent on metronidazole expired, over 20 generic mfrs. began to market white metronidazole tablets. Thus, in August 1982 "Searle began marketing its 'Searle Blue' metronidazole tablets, also in round and elliptical shapes, to distinguish its metronidazole tablets from the white, generic metronidazole tablets on the market." The court said that on March 11, 1985, Par filed a complaint against Searle seeking a declaratory judgment that Par could lawfully manufacture and sell blue, round and elliptical shaped metronidazole tablets. With respect to Par's deliberate copying of Searle's trade dress, Kocoras cited Par's testimony that it "obtained both sizes of Searle's blue Flagyl tablets and sent them to a dye company, Colorcon, 'to match the color.'" The court asserted that "though imitation alone may not be sufficient to establish secondary meaning, imitation is strong evidence of secondary meaning." The court added that it is "also persuaded that Searle will be irreparably harmed unless Par's manufacture and sale of blue metronidazole tablets is immediately enjoined." Kocoras said: "Since one of the inevitable results of look-alike drugs is the encouragement of illegal substitution, the extent of which is impossible to document, an accurate determination of sales lost to Searle and attributable to Par's alleged trade dress infringement would be impossible. Additionally, if Par were allowed to continue selling blue metronidazole tablets, Searle would be subjected to the expense of informing physicians, pharmacists and patients that Searle is no longer the sole mfr. of all blue metronidazole tablets." Par faced a similar look-alike suit last year when Merck charged Par with infringing its Indocin (indomethacin) trade dress. The New Jersey Federal Court's September 1984 ruling barring Par from selling or distributing indomethacin capsules similar in color, size and shape to Indocin was upheld by the Third Circuit in a May 1985 decision.