Specsavers applies for ‘Should’ve’ trademarks
Opticians chain Specsavers has applied to trademark ‘Should’ve’ and ‘Shouldve’, the words used as part of its advertising slogan ‘Should’ve gone to Specsavers’.
The applications were filed at the UK Intellectual Property Office (IPO).
The advertising campaign, which shows people failing to carry out tasks due to not wearing glasses, ends with the slogan 'Should’ve gone to Specsavers'.
It has recently featured actor John Cleese, star of former UK sitcom "Fawlty Towers".
The applications were filed on Monday, July 18 and cover classes 9, 10, 16, 35 and 44, which include goods such as spectacles, eye cups and hearing aid services.
Specsavers already owns a trademark for ‘Should’ve gone to Specsavers’. That application was approved in 2007.
Jeremy Morton, head of intellectual property litigation at Harbottle & Lewis, told WIPR: "There is no reason in principle why ‘Should've’ cannot be registered if it has sufficient distinctiveness. By way of examples, ‘Never’, ‘Don't’ and ‘Always’ are each currently registered as trademarks in the UK and/or EU.
"That does not prevent competitors from using those words in ordinary descriptive sentences. One might question the value of this kind of registration if it will not be a product brand in its own right. Mere use of ‘Should've’ in a longer English sentence by Specsavers might not amount to genuine use of the trademark. But there is a lot of interest in protecting hashtags as trademarks, which is where this could add value for Specsavers as a standalone word mark," he added.
John Coldham, director of IP at Gowling WLG, said: "My view is that it will be a real struggle [to obtain trademark protection]. Whilst you can register parts of longer slogans as trademarks (as Nestlé finally managed to do with its 'Have A Break' trademark application ten years ago), you really need to be able to prove that you have acquired distinctiveness in the trademark you are seeking to register.
"So in this case, consumers would have to see 'Should've' and think of Specsavers. I don't know whether the evidence will support that, but my gut feeling is that it will be unlikely to do so. I have seen 'Should've' used as a hashtag following Specsavers' promotion of it in its advertising campaigns.
"However, this does not automatically mean that people would consider 'Should've' (with or without the apostrophe) as a brand: they are only likely to associate it with Specsavers because they have seen the advertising campaign or been told about it, rather than because they have seen it in isolation," he added.
