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19 July 2013Trademarks

One to watch: CJEU rules on Specsavers v Asda

The Court of Justice of the EU (CJEU) has clarified that using a composite trademark can sustain a mark that forms one of its components.

In 2009 supermarket retailer Asda launched an advertising campaign for optical products that targeted Specsavers, the UK’s largest chain of opticians, by using the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at ASDA’ and several logos.

In response, Specsavers sued Asda in the UK for infringing several Community trademarks, including word marks for ‘Specsavers’ and figurative marks, one of which was a black logo with no writing (wordless mark).

The England & Wales High Court dismissed Specsavers’ infringement claims a year later and revoked the wordless mark for non-use.

On appeal, the UK Court of Appeal held in 2012 that Specsavers’ figurative marks could prevent Asda from using the slogans and logos in its advertising campaign.

But it referred five questions on two points of law, the first being whether the use of the double-oval logo jointly with the word ‘Specsavers’ constituted genuine use of the wordless mark.

The second, according to the court, was whether the colour green, which Specsavers has always used to represent its wordless logo mark and which Asda used in its advertising, affected the assessment of likelihood of confusion and taking unfair advantage.

On July 18, the CJEU found that where a blank logo, even when used in tandem with a word mark, is recognised by consumers as an independent trademark, adding the word mark does not significantly alter its distinctive character – and the blank logo survives as a trademark.

This provision applies as long as the differences between the used and registered marks “do not change the distinctive character” of the registered mark, the court said.

Assessing the colour question, the court said where a black or white trademark is registered but used extensively in a colour, subsequently becoming “associated in the mind of a significant portion of the public” with that colour, the alleged infringement by a coloured sign is relevant when assessing the likelihood of confusion or unfair advantage.

At the same time, the court said, where the potential infringer is itself commonly associated with the colour used for the sign, such as Asda’s green in this case, this can potentially counteract confusion or association with the earlier sign.

Alastair Shaw, of counsel at Hogan Lovells LLP, said both aspects of the ruling are important from an enforcement perspective.

“Brand owners will welcome the first part – that the use of a composite mark can sustain a mark which is one of its components.”

“But I am particularly interested in the colour issue. It’s particularly interesting that courts can also take into account the colour of the allegedly infringing mark. In most cases, it’s probably not going to make a big difference, as the colour of the allegedly infringing mark will be different. My hunch is the colour issue will even itself out at the Court of Appeal – although the use of the green colour will make Specsavers’ case stronger, the court can also take into account Asda’s use of green to counteract.”

He added: “We will wait to see what the Court of Appeal makes of it, and then we will have a better idea.”

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More on this story

Trademarks
16 October 2014   The UK Court of Appeal has overturned a previous decision by the English High Court that revoked a black wordless trademark held by optician Specsavers.