Wordless trademark restored to Specsavers, rules UK court

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.

It stems from a ruling in which certain parts of a 2009 advertising campaign, run by retailer Asda, were found not to have infringed Specsavers’ trademarks.

The revoked mark in question is two black ovals with no writing. Asda originally made the claim to cancel the trademark on ‘non-use’ grounds, which was accepted by the English High Court.

After an appeal to the UK Court of Appeals on the infringement issue, the court referred questions on the case to the Court of Justice of the European Union.

However, Specsavers and Asda later settled the infringement part of the dispute among themselves, leaving the issue of the wordless trademark’s status unresolved.

In an October 15 ruling at the UK Court of Appeal, Judge Lady Black said: “Consideration must be given to all of the use that has been made of the shaded logo mark, and to the perception of the average consumer. In the particular circumstances of this case there is, perhaps unusually, powerful evidence of both.

“I have come to the conclusion that ... Specsavers have established that much of the use they have made of the shaded logo mark including, in particular, its use on signage, does also constitute use of the wordless logo mark.”

Rob Guthrie, partner at King & Wood Mallesons SJ Berwin, agreed with the court’s ruling, but said only big brands will benefit from the ruling.

He said: “Consumers often recognise brands not only from their name or logo but also just from the shapes or colours used in their branding. The Court of Appeal has shown that it appreciates that this aspect of branding should also be protected.”

“However, the decision is only likely to be of benefit to well-known brands that can show that consumers recognise them in this way,” he added.