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Supermarket should've gone to Specsavers

The UK Court of Appeals has recently ruled in the case of Specsavers vs Asda Stores. Specsavers is a chain of high street opticians, well-known in the UK and several other countries, and famous for its advertising strapline “Should’ve gone to Specsavers”, usually used in relation to a character’s failure to see something, with humorous consequences. Asda is one of the UK’s major supermarket chains, with opticians in many of its stores.

The situation began when Asda developed a marketing campaign for their in-store opticians which used a logo consisting of two ovals with the words “Asda Opticians” across the centre, and the straplines “Be a real spec saver at Asda” and “Spec savings at Asda”. Specsavers claimed that this took unfair advantage of, and was likely to cause confusion with, their own trade marks, and they filed a claim for infringement with the UK courts. As part of their defence, Asda counterclaimed that one of Specsavers trade marks was invalid for non-use.

Under Section 15 of the Trade Marks Act 1994, if – without good reason – a registered trade mark has not been used within a period of five years following registration, or use of the mark has been suspended for a continuous period of five years, the registration can be revoked on the grounds of non-use. Use of the mark for the purposes of this Section can, however, include use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark.

Specsavers had two trade marks under review. The first mark was a word and device mark consisting of two overlapping green ovals bearing the word “Specsavers”, and the second was simply a device mark consisting of two overlapping ovals with no colour limitation (and so registered in respect of all colours). Asda’s counterclaim was in respect of the latter mark.

The UK courts initially found Asda guilty of one count of infringement, and found that Specsavers’ registration for the device mark should be revoked for non-use. The parties appealed against both of these decisions. The case for infringement was subsequently settled out of court, and so it was Specsavers’ appeal against revocation of their device mark which formed the subject of the recent proceedings. The question in suit was whether Specsavers’ widespread use of their logo (combining overlapping green ellipses and text) constituted genuine use of the device mark. In other words, is the device mark recognisable by the average consumer as denoting Specsavers?

The appeal first reached the UK courts in 2011, when a number of questions were referred to the Court of Justice of the European Union (CJEU). In July 2013, the CJEU held in principle that genuine use of a device mark could be provided by use of the same mark containing a text element (eg the Specsavers logo), the important issue being whether the addition of the text alters the distinctive character of the mark.

In October 2014 the case returned to the UK courts for consideration of whether the device mark had the same distinctive character as the Specsavers logo, and hence whether the device mark denoted, in the mind of the average consumer, a product or service of Specsavers. Oral evidence was given that, for the general public, the shape of the overlapping ellipses alone is indicative of Specsavers. The Judge pointed out that, when seen from a distance, the text on a Specsavers sign is not distinctive whilst the shape of the overlapping ellipses is clearly visible and identifiable by the public. It was further noted that Specsavers have made substantial use of their logo over a number of years, and no major competitors have a similar logo.

The judge concluded that the use Specsavers have made of their logo, in particular its use on signs, does constitute use of the device mark. He held that the average consumer does perceive the shape of the overlapping ellipses as indicative of the origin of the goods and services supplied by Specsavers, even without the text. Hence, the differences between the device mark and the logo used by Specsavers do not alter the distinctive character of the device mark, and hence use of the latter amounted to use of the registered device mark for the purposes of Section 15. The registration therefore survived the attempt to revoke it on the ground of non-use.

However, upon reaching this conclusion the Judge was careful to note that this case stands on its own merits, and in most cases it is unlikely that the background of a mark will be perceived by the average consumer as an indication of origin. Where the background shape or design of a mark is particularly distinctive and/or different to those of competitors, it may however be worth considering whether there is merit in obtaining a trade mark for the background design.

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