Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 1 of 11 PageID #: 1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS SHERMAN DIVISION GLAXO GROUP LIMITED and GLAXOSMITHKLINE CONSUMER HEALTHCARE (UK IP LIMITED, v. PERRIGO COMPANY, Plaintiffs, Defendant. Civil Action No. JURY TRIAL DEMANDED COMPLAINT Plaintiffs Glaxo Group Limited and GlaxoSmithKline Consumer Healthcare (UK IP Limited, as and for their Complaint against defendant Perrigo Company ( Perrigo, allege as follows: PARTIES, JURISDICTION AND VENUE 1. Plaintiff Glaxo Group Limited ( GGL is a private company, limited by shares, organized under the laws of England and Wales, with its principal place of business located at 980 Great West Road, Brentford, Middlesex, England. 2. Plaintiff GlaxoSmithKline Consumer Healthcare (UK IP Limited ( GSKCH is a private company, limited by shares, organized under the laws of England and Wales, with its principal place of business located at 980 Great West Road, Brentford, Middlesex, England. GGL and GSKCH will be referred to collectively as GSK. GGL and GSKCH are members of the GSK group of companies.
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 2 of 11 PageID #: 2 3. Upon information and belief, defendant Perrigo Company ( Perrigo is a corporation organized under the laws of the State of Michigan, with its principal place of business located at 515 Eastern Avenue, Allegan, Michigan. 4. This is a civil action for trademark infringement, unfair competition and dilution in violation of 32(1, 43(a(1(A and 43(c of the U.S. Trademark Act of 1946, as amended (the Lanham Act, 15 U.S.C. 1114(1, 1125(a(1(A and 1125(c; and for trademark infringement, unfair competition and dilution under the laws of the State of Texas. 5. This Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. 1331 and 1338 and has supplemental jurisdiction pursuant to 28 U.S.C. 1367(a. 6. Upon information and belief, this Court has personal jurisdiction over Perrigo because it has committed tortious acts and caused injury as described herein in the State of Texas, and has engaged in and transacted business in the State of Texas by shipping into the State the infringing and diluting products described herein. Venue is proper in this District pursuant to 28 U.S.C. 1391(b. GSK AND ITS FLONASE TRADEMARK 7. The GSK group of companies is among the world s largest pharmaceutical companies, with origins dating back to 1715 in England and 1830 in the U.S. Headquartered in the United Kingdom, the group's U.S. predecessors include SmithKline Beecham, which merged with Glaxo Wellcome plc to form the current GSK group of companies in 2001. The GSK group produces and markets a broad range of pharmaceutical, vaccines and consumer healthcare products around the world. Among the GSK group of companies better-known respiratory pharmaceutical brands sold in the U.S. are ADVAIR, BREO, FLOVENT, VERAMYST and, relevant to this case, FLONASE allergy relief products. 2
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 3 of 11 PageID #: 3 8. Products sold under the FLONASE trademark are corticosteroids used most often to treat nasal allergies, asthma and other respiratory diseases. FLONASE is the product of many years of research, and the product was launched in the U.S. in 1994. From the time of its introduction in this country until early 2015, FLONASE was available only by prescription, and more than 112 million prescriptions were written for FLONASE during this period. In 2014, the U.S. Food & Drug Administration approved the sale of FLONASE as an over-thecounter ( OTC product, and OTC sales began in early 2015. 9. From inception through the end of 2015, sales of FLONASE in the U.S. have exceeded $6 billion cumulatively. In 2015 alone, OTC sales of FLONASE exceeded $330 million wholesale. FLONASE has been the subject of extensive advertising and promotion from the time of launch through the present, in the form of print, television, electronic and digital communications. Since 1994, GSK has spent substantial sums on the advertising and promotion of FLONASE, including more than $100 million in the last year alone. Since its launch in early 2015, the FLONASE OTC product has achieved a market share of 11.6% of the total adult allergy OTC product category by dollar sales. 10. The FLONASE trademark was registered with the U.S. Patent & Trademark Office (the PTO on January 3, 1995 for pharmaceutical preparations and substances for the treatment and/or alleviation of respiratory diseases as U.S. Reg. No. 1,870,977. A copy of the certificate of registration issued to GGL by the PTO for FLONASE is attached as Exhibit 1. This registration remains valid and subsisting, and it has become incontestable under 15 U.S.C. 1064. 11. Since its launch as an OTC product in early 2015, FLONASE has been packaged in a distinctive, non-functional trade dress that is depicted in Exhibit 2 hereto (the FLONASE Trade Dress. The FLONASE Trade Dress consists of: (i a rectangular package; 3
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 4 of 11 PageID #: 4 (ii featuring the dominant colors white and green; (iii an arrangement of six multicolored, geometric shapes, within which appear symbols of allergens that FLONASE is designed to treat; (iv the FLONASE spray bottle with its elongated green cap. Tens of millions of units of products packaged in the FLONASE Trade Dress have been sold over the past year at such wellknown retail chains as Wal-Mart, Target, Walgreen s, CVS, Costco, Rite Aid and others. The FLONASE Trade Dress has been featured regularly in advertising and promotional materials for FLONASE, as shown in the representative point of sale materials, advertisements and related materials attached collectively as Exhibit 3 hereto. 12. As a result of the extensive sales, advertising, marketing and promotion of products sold under the FLONASE trademark and FLONASE Trade Dress in both the U.S. and the State of Texas, the inherently distinctive trademark and Trade Dress have become famous, and consumers in the U.S. generally and Texas specifically associate both the FLONASE trademark and FLONASE Trade Dress exclusively with GSK and view such trademark and Trade Dress as designating the source of GSK s FLONASE products. The goodwill inherent in the FLONASE trademark and FLONASE Trade Dress is of substantial value to GSK. PERRIGO AND ITS INFRINGING AND DILUTING NASOFLOW PRODUCTS 13. Upon information and belief, Perrigo is a supplier of, among other things, overthe-counter pharmaceutical products that are intended to replicate either the formulas or active ingredients of leading national brands. Such products are, upon information and belief, often sold by Perrigo to retailers for sale to consumers as private label versions of such national brands. Many national retailers offer private label versions of leading national brands that bear the retailers house trademark, and consumers are often invited to compare the private label product to the national brand to which it corresponds. 4
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 5 of 11 PageID #: 5 14. Upon information and belief, Perrigo has, within the last several weeks, begun selling to retailers private label versions of FLONASE under the trademark NASOFLOW, a designation that is intended to imitate the FLONASE trademark (the NASOFLOW Products. Unlike many private label products that either lack a brand name, or that use the retailer's house mark as the brand name, NASOFLOW is intended to and does function as the brand name of Perrigo's private label products. The NASOFLOW trademark is strikingly similar visually and aurally to the FLONASE trademark. Indeed, NASOFLOW is essentially the inversion of the two syllables used in FLONASE. Given the substantial similarities between FLONASE and NASOFLOW, consumers are likely to confuse them as to source, sponsorship and/or affiliation. 15. In addition, the NASOFLOW Products being marketed by Perrigo use a trade dress incorporating a combination of elements taken from the FLONASE Trade Dress, including: (i an arrangement of five multicolored, geometric shapes, within which appear symbols designed to connote allergens the Perrigo product aims to treat; and (ii a dominant green packaging (the NASOFLOW Trade Dress. Images of the NASOFLOW Trade Dress appear in Exhibit 4 hereto. 16. Upon information and belief, Perrigo, in common with the rest of the trade and public, is well aware of both the FLONASE trademark and FLONASE Trade Dress, and of the goodwill represented and symbolized thereby. Notwithstanding said awareness, and in fact by reason of same, Perrigo has knowingly distributed, offered for sale and/or sold in commerce in the United States, including within this District, products that bear the confusingly similar and diluting NASOFLOW trademark and the confusingly similar and diluting NASOFLOW Trade Dress. 5
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 6 of 11 PageID #: 6 17. Such use of the NASOFLOW trademark and NASOFLOW Trade Dress is intended to, and is likely to, cause confusion, mistake or deception of the trade and public, and to cause them to believe falsely that Perrigo s products sold under such mark and using such trade dress are authorized, sponsored or approved by GSK or are otherwise associated, affiliated or connected with GSK and/or GSK s FLONASE products and FLONASE Trade Dress, and to dilute the distinctive quality of such trademark and Trade Dress. 18. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark and FLONASE Trade Dress, and said acts will continue unless restrained by this Court. 19. GSK has no adequate remedy at law and has suffered and will continue to suffer damage as a result of Perrigo s use of the NASOFLOW trademark and NASOFLOW Trade Dress. COUNT I FEDERAL TRADEMARK INFRINGEMENT 20. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 19 as if fully set forth herein. 21. Perrigo s conduct constitutes trademark infringement of GSK s Registration No. 1,870,977 in violation of Section 32(1 of the Lanham Act, 15 U.S.C. 1114(1. 22. Perrigo s unlawful conduct is willful. 23. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 24. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark, and such acts will continue unless restrained by this Court. 6
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 7 of 11 PageID #: 7 COUNT II FEDERAL UNFAIR COMPETITION 25. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 24 as if fully set forth herein. 26. Perrigo s conduct constitutes unfair competition in violation of Section 43(a(1(A of the Lanham Act, 15 U.S.C. 1125(a(1(A. 27. Perrigo s unlawful conduct is willful. 28. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 29. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark and FLONASE Trade Dress, and such acts will continue unless restrained by this Court. COUNT III COMMON LAW TRADEMARK INFRINGEMENT 30. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 29 as if fully set forth herein. 31. Perrigo s actions constitute infringement of GSK s rights in the FLONASE trademark and FLONASE Trade Dress in violation of Texas common law. 32. Perrigo s infringement is intentional and willful. 33. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 34. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark and FLONASE Trade Dress, and such acts will continue unless restrained by this Court. 7
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 8 of 11 PageID #: 8 COUNT IV COMMON LAW UNFAIR COMPETITION 35. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 34 as if fully set forth herein. 36. Perrigo s actions constitute unfair competition in violation of Texas common law. 37. Perrigo s acts of unfair competition are intentional and willful. 38. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 39. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark and FLONASE Trade Dress, and such acts will continue unless restrained by this Court. COUNT V FEDERAL DILUTION 40. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 39 as if fully set forth herein. 41. Perrigo s conduct constitutes dilution in violation of Section 43(c of the Lanham Act, 15 U.S.C. 1125(c. 42. Perrigo s unlawful conduct is willful. 43. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 44. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark, and such acts will continue unless restrained by this Court. 8
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 9 of 11 PageID #: 9 COUNT VI VIOLATION OF THE TEXAS ANTI-DILUTION STATUTE 45. GSK repeats and realleges each and every allegation set forth in paragraphs 1 through 44 as if fully set forth herein. 46. Perrigo s actions are likely to improperly dilute the value of GSK s distinctive FLONASE trademark in violation of V.T.C.A. 16.103. 47. Perrigo s unlawful conduct is willful. 48. As a result of Perrigo s conduct, GSK has suffered and will continue to suffer 49. Perrigo s activities have caused and will continue to cause irreparable harm to GSK and to the substantial goodwill embodied in the FLONASE trademark, and such acts will continue unless restrained by this Court. WHEREFORE, GSK prays for a judgment: 1. Preliminarily and then permanently enjoining and restraining Perrigo, its officers, agents, servants, employees, licensees, distributors, attorneys, corporate affiliates, successors and assigns, and/or all persons or entities acting in concert or participation with them, or any of them, from the advertising, promotion, marketing, offering to sell or selling of goods using: (i the FLONASE trademark or any variation thereof, including but not limited to the NASOFLOW designation; (ii the NASOFLOW Trade Dress depicted in Exhibit 4 hereto, or any variation thereof; and (iii any other false designation of origin or false description or representation or any other thing calculated or likely to cause confusion or mistake in the mind of the trade or public or to deceive the trade or public into believing that Perrigo s business or goods are in any way associated or affiliated with or related to GSK, GSK s FLONASE products, or to dilute the distinctive quality of the FLONASE trademark; 9
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 10 of 11 PageID #: 10 2. Directing Perrigo to deliver up for destruction or other disposition, within thirty (30 days of the entry of final judgment herein, any and all merchandise, packaging, labels, stationery, advertising and other materials in its possession, whether in hard copy, electronic or any other format, that bear any trademark or designation in violation of GSK s rights as decreed herein; 3. Directing Perrigo to file with the Court and serve on counsel for GSK, within (30 thirty days after entry of any injunction issued by the Court in this action, a sworn written statement as provided in 15 U.S.C. 1116; 4. Directing Perrigo to account to GSK for its profits arising from the conduct complained of herein, pursuant to 15 U.S.C. 1117; 5. Awarding GSK damages in an amount to be determined at trial; 6. Awarding GSK exemplary damages for Perrigo s willful and intentional infringement of GSK s common law trademark rights and for Perrigo s willful and intentional acts of common law unfair competition. 7. Awarding GSK its reasonable attorneys fees, taxable costs and disbursements of this action, pursuant to 15 U.S.C. 1117; and 8. Awarding GSK such other and further relief as the Court deems just and proper. triable. JURY DEMAND Plaintiff hereby demands a trial by jury on all of its claims and any other matters so 10
Case 4:16-cv-00140-ALM Document 1 Filed 02/29/16 Page 11 of 11 PageID #: 11 Date: February 29, 2016 Respectfully Submitted, By /s/ John M. Cone John M. Cone jcone@dallasbusinesslaw.com FERGUSON, BRASWELL & FRASER, PC 2500 Dallas Parkway, No. 501 Plano, Texas 75093 Tel. (972 826-4436 Bruce R. Ewing (pro hac vice admission pending ewing.bruce@dorsey.com DORSEY & WHITNEY LLP 51 West 52 nd Street New York, New York 10025 Tel. 212-415-9206 Attorneys for Plaintiffs Glaxo Group Limited and GlaxoSmithKline Consumer Healthcare (UK IP Limited 11