Roche and gene therapy rival bluebird bio are settling a short-lived trademark infringement lawsuit around the latter company’s sickle cell disease awareness campaign.
Roche’s gene therapy unit, Spark Therapeutics, and bluebird have jointly moved to dismiss the lawsuit thanks to a settlement agreement, according to a filing posted in a Delaware federal court.
A bluebird spokesperson confirmed the settlement but said the terms are confidential. Spark didn’t immediately reply to a request for comment. As of Wednesday morning, the bluebird campaign at question, dubbed “Be the Spark,” remains live.
Spark filed the lawsuit a year ago, arguing bluebird’s use of the word “spark” in its sickle cell disease education campaign infringed its trademark. Bluebird intentionally adopted the “Be the Spark” slogan to weaken Sparks’ brand, and the name could confuse patients and doctors, the Roche unit had said.
In its counterargument, bluebird criticized Roche for trying to “shut down, compromise, and/or silence” an effort to raise disease awareness. The Massachusetts-based biotech has also argued that the campaign wouldn’t cause any misunderstandings. Although both companies are working on gene therapies for blood disorders, Spark’s existing pipeline focuses on hemophilia.
The settlement comes after a judge in January denied Spark a preliminary injunction to temporarily block bluebird’s campaign. Although Judge William Bryson said there was a small chance Spark could win the case, he concluded an injunction would harm bluebird even more. Further, the public interest also points to keeping the bluebird campaign active at least during the legal process.
Meanwhile, both companies seemingly have more important matters to worry about.
Spark just officially elevated former chief operating officer, Ron Philip, to the CEO role in April. The company’s lead clinical program, a Pfizer-partnered hemophilia B gene therapy, is expected to post a delayed data readout in the first quarter of 2023.
As for bluebird, the company is in much bigger trouble. Bluebird closed shop in Europe last year because of reimbursement obstacles for its beta thalassemia gene therapy Zyntelgo. Then last month, the company launched a round of layoffs affecting 30% of its workforce.
The biotech is trying to extend its cash runway after the FDA delayed a decision for Zynteglo, or beti-cel, in beta-thalassemia and eli-cel for cerebral adrenoleukodystrophy to August and September.
Before those setbacks, bluebird’s lentiviral vector-based gene therapy programs suffered multiple clinical holds. One remains in place for beti-cel’s sister med, lovo-cel, which bluebird’s sickle cell disease campaign is preparing for.
Bluebird is now also counting on selling potentially two priority review vouchers from the possible approvals of beti-cel and eli-cel. The company has estimated that the vouchers could fetch up to $200 million.