06/09/2013
Case review: Specsavers vs Asda Preliminary Ruling from the Court of Justice of the European Union.
This entry follows the recent preliminary ruling from the Court of Justice of the European Union on the “SPECSAVERS” case. We highlight the key issues from the decision and provide a brief summary of the case history.
Key Issues To Note
This case highlights the importance of registering the trade marks that your business actually uses, particularly where your trade marks change over time with marketing and brand development.
In order to defend a trade mark registration which has been attacked on the grounds of non-use, the proprietor must show that the mark has been put to ‘genuine use’ in the relevant territory and in the relevant time period.
The CJEU in this preliminary ruling states that the ‘genuine use’ requirement for a figurative mark (such as a logo or device) could in theory be fulfilled even if the mark is only ever used in conjunction with a registered word mark which is superimposed over the top of the figurative mark. The condition being that the form in which the trade mark is used (which may not be strictly identical to the form in which the mark registered) must not change or alter the distinctive character of the trade mark as it was registered.
The case will now return to the Board of Appeal (England and Wales) to decide whether the superimposition of the word SPECSAVERS over the figurative mark 
, changes the distinctive character of the trade mark registration for .
Comment
The use of a trade mark in a form which is different from the form in which it was originally registered is likely to be considered as ‘genuine use’ of the registered mark so long as the distinctive character of the trade mark has not changed. For instance, slightly changing the script used is unlikely to change the distinctive character of a trade mark.
This may provide some comfort to trade mark owners who registered their logo or trade mark a number of years ago and have made slight, non-distinctive changes to their trade mark since filing.
A change in the distinctive character of a mark is most likely to arise when a company adds a new element or updates a word mark to include a device or logo. The fact that a company has gone to the trouble of commissioning or designing a new logo suggests that the element is important and intended to be a viewed as a change from the ‘old’ mark. It is advisable, therefore, to register the new element either on its own and/or in combination with the word mark.
Another issue covered by this ruling was whether colour could be a relevant factor for the court to take into account if the trade mark was registered in black and white but was consistently used with the same colour or colour combination. Historically it was assumed that registering a mark in black and white protected the mark in all possible colours and colour combinations. This assumption has recently been questioned, particularly in light of the ‘says-what-it-is’ approach taken by the Office, following the IP Translator decision.
The CJEU ruled that the colour used with a trade mark by a proprietor may be a relevant factor for the court to take into consideration if the proprietor can show that it has extensively used a trade mark in a particular colour or combination of colours and as a result the mark has become associated in the mind of a significant portion of the public with that colour or combination of colours.
This ruling may relieve some proprietors who have trade marks registered in black and white and yet always use the mark with a specific colour or colour combination. Again, this case highlights the potential issues a company can avoid simply by registering the company’s marks in the form (and colour) in which they are used.
Background
Asda, owner of a chain of supermarkets, launched an advertising campaign for optical products. In that campaign, Asda used the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at ASDA’, as well as the following logos:
Specsavers, a retail chain which offers optician goods and services, brought a court action against Asda alleging infringement of the following Community Trade Marks (CTMs):
- Registrations for the word mark ‘SPECSAVERS’;
- Registrations for ‘the shaded logo marks’ :
- Registrations for ‘the wordless logo mark’
The High Court held that Asda had not infringed the Specsavers trade marks. That court also revoked Specsavers’ wordless logo mark for non-use because Specsavers did not provide evidence showing use of the wordless logo mark on its own (i.e. without the word mark SPECSAVERS superimposed over it). Specsavers appealed the judgment.
On appeal the Board of Appeal ruled that Specsavers was entitled to prevent Asda from using the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at Asda’ and the logos used by Asda.
However, the Board of Appeal decided that in order to rule on the aspect of the dispute concerning the wordless logo mark it was necessary to refer the following issues to the CJEU for a preliminary ruling.
The Questions Referred By The Court Of Appeal & The Responses From The Preliminary Ruling
Question 1: Where a trader has separate registrations of CTMs for
- (a) a graphic device mark
- (b) a word mark
and uses the two together, is such use capable of amounting to use of the figurative mark? If yes, how is the question of use of the graphic mark to be assessed?
Question 2: Does it make a difference if:
- (a) the word mark is superimposed over the figurative element?
- (b) the trader also has the combined mark comprising the figurative element and the word mark registered as a CTM?
Question 3: Do the answers to questions 1 and 2 depend upon whether the graphic device and the words are perceived by the average consumer as being separate signs; or each having an independent distinctive role? If so, how?
Nutshell answer to Questions 1-3:
The condition of ‘genuine use’ may be fulfilled where a figurative mark is used only in conjunction with a word mark which is superimposed over it, and the combination of those two marks is itself registered, as long as the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of the mark as registered.
Question 4: Where a CTM is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of either the likelihood of confusion or unfair advantage? If so, how?
Nutshell answer:
Where a CTM is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage.
Question 5: If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?’
Nutshell Answer:
The fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage and can also be relevant to determining whether the use of that sign has a ‘due cause’.
Conclusion
The CJEU has answered some interesting trade mark questions in its preliminary ruling for SPECSAVERS. We look forward to seeing how the Board of Appeal interprets the CJEU’s answers when making its final decision in the SPECSAVERS case.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
