by Farah Mukaddam (United Kingdom)

On 18 July 2013, the Court of Justice of the European Union (CJEU) gave a ruling on a reference in the case of Specsavers International Healthcare Ltd and others v Asda Stores Ltd from the Court of Appeal of England & Wales on use of trade mark combinations and colours.

Background of Specsavers v. Asda

By way of a brief overview, the claimant Specsavers (a retail chain of opticians) sued the defendant Asda (a supermarket chain) for trade mark infringement. Specsavers held registered word marks for ‘SPECSAVERS’ and registered logo marks consisting of overlapping oval shapes with the written words ‘SPECSAVERS’ on them except in one instance. See Fig. 1 and 2. The marks were not registered for a particular colour but Specsavers used the logos extensively in a particular shade of green. See Fig. 3. Asda ran in-house opticians within its supermarket stores. In October 2009, Asda launched an advertising campaign which targeted Specsavers as the largest chain of opticians in the UK. As part of its campaign, Asda used logos which consisted of non-overlapping oval shapes with the written words ‘ASDA OPTICIANS’ on them in a lighter shade of green. See Fig. 4. Asda also used the slogans ‘Be a real spec saver at Asda’ and ‘Spec Savings at ASDA’. Specsavers claimed that by using the logos and slogans, Asda had infringed its registered trade marks as they were likely to cause confusion with and took unfair advantage of Specsavers’ registered trade marks in accordance with Articles 9(1)(b) and 9(1)(c) of Regulation 207/2009.

High Court of Justice ruling

The High Court, on 30 July 2010, held that:

  • there was no confusion or association with the Specsavers’ marks for the purposes of infringement. The marks were similar but there were significant differences in that the oval shapes in the Asda marks did not overlap and the Asda slogans clearly made reference to Asda. Further, as Specsavers’ marks were not registered for a particular colour, this meant that they were registered for all colours and accordingly the colour of the Asda logo was irrelevant;
  • Asda’s slogan ‘Be a real spec saver at Asda’ infringed Specsavers’ registered marks as the slogan called into mind the ‘SPECSAVERS’ mark. It sought to establish a reputation for value by leveraging off the reputation that Specsavers’ had which gave Asda an advantage which was unfair. With regards to the second slogan and the logo marks, the link between them and Specsavers was too weak to amount to an unfair advantage being gained by Asda; and
  • the wordless logo was revoked for non-use.

Court of Appeal of England and Wales ruling on Specsavers v. Asda

Specsavers appealed the findings of non-infringement and revocation for non-use. On 31 January 2012 the Court of Appeal gave judgment in which it:

  • partially allowed the appeal holding that although there was no risk of confusion or association with the Specsavers’ marks both Asda’s slogans and logo took unfair advantage of Specsavers’ word and logo marks as they sought to bring Specsavers to mind, make an association with Specsavers and/or leverage off Specsavers’ reputation; and
  • stayed the High Court’s ruling with respect to revocation and infringement of the wordless mark pending a reference to the CJEU. (An EU national Court is obliged to refer relevant questions of EU law to the CJEU if the answer under EU law is not clear.)

The need for the reference arose as according to Article 15 of Regulation 207/2009, use of a registered trade mark may be made “in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”. The questions referred to, and the rulings of, the CJEU are outlined below.

CJEU ruling on genuine use in combination

If a brand owner has separate trade mark registrations for a logo mark and a word mark, and uses the two together, does this amount to genuine use of the logo mark? The CJEU held that use of a composite mark (with the word mark superimposed over the logo mark) is capable of amounting to genuine use of the logo mark provided that the way in which the composite mark is used does not change the distinctive character of the logo mark as registered. The conclusion is not affected by the fact, as in this case, that the word mark and the combination of the wordless logo with the superimposed word mark are registered trade marks.

CJEU ruling on use of mark in different colour

If a trade mark is not registered in colour, but the brand owner has used it extensively in a particular colour so that it has become associated in the mind of a significant portion of the public with that colour, is the colour which a third party uses with respect to the alleged infringing sign relevant in the global assessment of likelihood of confusion or unfair advantage? The CJEU held that where a trade mark has not been registered in colour, but the brand owner has used it extensively in a particular colour such that it has become distinctive, this is relevant to the global assessment of both likelihood of confusion and unfair advantage.

CJEU ruling on third party association with colour

Is it relevant as part of the global assessment that the third party is itself associated in the mind of a significant portion of the public with the colour which it is using for the alleged infringing mark? The CJEU held that the fact that a third party is itself associated with the same colour that is used for the alleged infringing mark is relevant to the global assessment of the likelihood of confusion and unfair advantage.

What does this mean?

This is a very positive decision for brand owners. It clarifies that the Courts will take a generous approach as to what constitutes genuine use, such that brand owners can apparently now enforce logo mark registrations against third parties with greater confidence, even if they have not used that logo mark on its own. It appears likely that brand owners will seek to enforce their logo marks, rather than registered composite marks which feature the brand name, against third parties as it is more likely that a wordless logo mark will be deemed similar to the third party mark. The ruling from the CJEU should therefore act as a deterrent to copy-cats who superimpose their brand name on to logos that are similar or identical to those of well-know, reputable brands. The ruling on the use of colour means less certainty for third parties. It means both the brand owner’s manner of use as well as graphical representation (here, colour) of the mark is relevant in the global assessment of likelihood of confusion and unfair advantage. To that extent the case appears to mark a new factor to take into account for infringement but in reality it is probably a logical extension of the global assessment test. In this case, the effect was to extend the protection afforded by the trade marks by considering the actual representation of the mark by the brand owner. However one could perceive circumstances where looking at the actual representation could limit the scope of protection. The decision with respect to a third party’s association with the relevant colour marks a potential erosion of brand owners’ rights in that it could operate to diminish the likelihood of a finding of confusion with, and/or unfair advantage from, the brand owner’s marks. Sources: Specsavers International Healthcare td and others v Asda Stores Ltd, Case C 252/12, 18 July 2013; Specsavers International Healthcare Limited & others v Asda Stores Limited [2010] EWHC 2035 (Ch); Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] EWCA Civ 24    

This update was prepared by Farah Mukaddam (farah.mukaddam@nortonrosefulbright.com / +44 20 7444 5622) Norton Rose Fulbright UK’s intellectual property group.