17 August 2016Trademarks

UK approves Specsavers ‘Should’ve’ TM applications

Opticians chain Specavers has had trademark applications for ‘Should’ve’ and ‘Shouldve’ approved by the UK Intellectual Property Office (IPO).

Last month, WIPR reported that Specsavers had applied to trademark the terms, which are used as part of its advertising slogan ‘Should’ve gone to Specsavers’.

The marks were published for opposition on Friday, August 12. Specsavers’s rivals have until October 12 to object to the marks.

The advertising campaign, which shows people failing to carry out tasks due to not wearing glasses, has recently featured actor John Cleese, star of former UK sitcom “Fawlty Towers”.

The applications were filed on July 18 and cover classes 9, 10, 16, 35 and 44, which include goods such as spectacles, eye cups and hearing aids.

Guy Heath, partner at law firm Nabarro, told WIPR that extensions to the opposition period are already being obtained and people are "lining up to have their say" about the registrability of the mark.

Simon Miles, partner at law firm Edwin Coe, said that two notices of intention to oppose have been submitted but that it is not know by whom.

"The oppositions could either be based on the opponent owning (or claiming to have a reputation in) an earlier trademark that is similar to 'Should've', or could be any third party who simply believes that Specsavers should not be given a monopoly over the word."

He continued: "Typically, ordinary dictionary words do not perform a trademark function, and many other contractions have made it into the dictionary including as 'isn’t' or 'won’t'. Therefore, the absence of 'Should've' from the dictionary may have played a part in the IPO’s decision to accept the application."

Simon Clark, partner at law firm Berwin Leighton Paisner, said that the fact that Specsavers’s trademark for 'Shouldve' has been accepted does not mean, as has already been reported in the press, that other traders will not be able to use the phrase in their marketing.

"While it could stop another trader from using 'Shouldve' or a similar mark as a brand name in respect of the relevant goods and services, Specsavers could not use the mark to stop traders from using 'Should’ve' in the ordinary English language sense as part of their promotional activities," he added.

But Jim Dennis, partner at law firm Gordon Dadds, said the mere threat of litigation from an organisation of Specsavers’ size could be a sufficient deterrent.

He added: "It would be somewhat naïve to pretend that Specsavers won’t try to prevent innocent usage of the phrase 'Should’ve' if they are granted a registration."

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More on this story

23 September 2016   The global lead counsel for opticians chain Specsavers has told delegates at Marques 2016 that the brand’s famous ‘Should’ve’ slogan “isn’t the only brand we use”.