In our Autumn 2010 edition, we reported on the Specsavers v Asda case  EWCH 2035 (Ch), in which Specsavers sued Asda for trade mark infringement and passing off of their well-known SPECSAVERS word mark, Specsavers logos (shaded, unshaded and wordless versions) and their memorable slogan “Should have gone to Specsavers”. The outcome of this case was that the ASDA Opticians logo was deemed to have infringed Specsavers’ earlier rights under Article 9(1)(c) of CTMR and, unfortunately for Specsavers, that their CTM registration (no. 1358589) for the wordless logo was revoked on the ground of non-use (as a result of Asda’s counterattack).
Specsavers subsequently appealed against the revocation decision and Asda cross-appealed. The Court of Appeal were able to decide on various issues of the case. However, they felt that there were a number of questions on the interpretation of Articles 9(1)(b) and (c), Article 15 and Article 51 of the Community Trade Mark Regulation which needed to be referred to the European Court of Justice (CJEU). The CJEU replied in their judgment of 18 July 2013 in Case C-252/12. In the meantime, Specsavers and Asda had settled their dispute amicably under confidential terms. However, Asda agreed that Specsavers were entitled to pursue their appeal in respect of the revocation of their wordless logo mark.
Specsavers’ wordless logo consisted of two overlapping ovals in black, which had been registered without any colour limitation and was therefore thought to be registered in respect of all colours. In the earlier trial, Asda had relied on Articles 15 and 51 in their revocation action against Specsavers’ wordless logo. Specsavers, in turn, had relied on the use of their shaded logo mark (consisting of two overlapping shaded ovals featuring the superimposed word Specsavers in white lettering) as proof of genuine use of the wordless logo. The shaded logo was in fact used in green (ovals) and white (lettering).
In making their decision, the Court of Appeal relied on the advice of the CJEU, in particular in respect of the following points:
a) Article 15(1) and Article 51(1)(a) of CTMR “must be interpreted as meaning that the condition of “genuine use”, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.”
b) The global assessment of likelihood of confusion must be based on “the overall impression given by the marks bearing in mind their distinctive and dominant components.” Additionally, “the perception of the marks by the average consumer plays a decisive role in the global appreciation of the likelihood of confusion.”
c) “Where a mark is registered in black and white, the colour in which it is in fact used does affect how it is perceived…the colour may become associated with the mark, and so it would not be logical for it not to be taken into account in carrying out the global assessment.”
The initial view of the Court of Appeal was that Specsavers’ use of its Specsavers shaded logo mark did not present a strong argument in support of their use of the wordless logo mark because in the shaded logo mark, the word Specsavers was distinctive and appeared in prominent letters in a contrasting colour across the centre of the mark. However, they acknowledged that consideration must be given to all of the use that had been made of the shaded logo and to the perception of the average consumer. With this in mind, the Court noted that:
1) Specsavers had made “very substantial use indeed” of its shaded logo over the years (use of the shaded logo since 1995 on signs inside and outside stores and on almost all in-store materials; extensive use in advertising, marketing and promotional activities);
2) None of Specsavers’ major competitors had a logo which was even remotely similar to Specsavers’ shaded logo;
3) The way in which Asda came to select their logo provided the Court with persuasive evidence of how Specsavers’ shaded logo is perceived (Asda started off with what was essentially Specsavers’ wordless logo mark and then endeavoured to move a safe distance away from it); and
4) If average consumers recognised the green overlapping ellipses on signage outside Specsavers’ outlets as representing Specsavers, which the Court believed to be true, such signage would amount to genuine use of the wordless logo which was registered in respect of every colour.
This lead the Appeal Court to conclude that the use made by Specsavers of its shaded logo, in particular its use on signage, did amount to genuine use of the wordless logo, since the evidence in this case demonstrated that the wordless logo had served and continued to serve to identify the goods and services offered by Specsavers. Further, much of the use of the shaded logo had been such that the differences between the shaded logo and the wordless logo had not changed the distinctive character of the wordless logo and the wordless logo had itself therefore been seen as a trade mark, not just as background.
Although in this case Specsavers achieved a favourable decision, in their conclusion the Court of Appeal emphasized the fact that this was an unusual case which was supported by convincing evidence and that it was unlikely that, in general, the background of a mark would be perceived by the average consumer as an identification of origin. They also made it clear that each case must be decided on its own merits and in the light of all the relevant circumstances.
Not every trade mark owner would be in as strong a position as Specsavers so, although interesting, this case cannot be viewed as a ground breaking precedent to be referred to in all future actions where genuine use of such a “background” mark is called into question. Presented with a similar situation, without extensive branding and marketing, the average trade mark owner is unlikely to be able to prove such genuine use of such a “background” mark.