The English High Court has confirmed that use of a combination of words and a background logo can be sufficient to support use of the logo alone even where that logo is not particularly distinctive.
Specsavers appealed against a High Court decision that Specsavers’ trade mark
or ‘wordless mark’, be revoked for non-use. The appeal was on the basis that Specsavers had in fact used the wordless mark, albeit in combination with the word Specsavers, and that this should be deemed ‘use’ of the mark because the words did not alter the distinctive character of the wordless mark.
Background
Specsavers sued Asda in the English High Court for trade mark infringement after Asda launched an advertising campaign for its in-house opticians. Asda specifically targeted Specsavers, as the largest chain of opticians in the UK. As part of its campaign, Asda used a logo which consisted of non-overlapping oval shapes with the words ‘ASDA Opticians’ on them in a light shade of green:
Specsavers relied on various registered Community trade marks in its claim, which included the wordless mark above.
As the registration is not limited to a particular colour in accordance with established trade mark law it is registered for all colours. Asda sought to revoke the wordless mark for non-use on the basis that Specsavers had not put its wordless mark to genuine use within the Community for five years since registration under Article 15(1) and 51(1) of Regulation 207/2009/EC (CTM Regulation).
In response, Specsavers relied not on the use of the wordless mark itself, but on the use of the following logo (which became known as the ‘shaded logo’):
Article 15 of the CTM Regulation states that the 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 issue to be determined was whether the addition of the word ‘Specsavers’ to the overlapping ellipses altered the distinctive character of the wordless mark so that use of the shaded logo could not be relied upon.
The English court referred the issue to the Court of Justice of the European Union (CJEU). In July 2013, the CJEU held:
- The condition of ‘genuine use’ could be satisfied where a Community logo mark is only used in conjunction with a Community word mark superimposed on it, to the extent that it does not change the distinctive character of the Community logo mark as registered. The conclusion is not affected by the fact that, as in this case, the composite mark is itself a registered trade mark.
- For a trade mark to possess distinctive character, it must be perceived by the average consumer as indicative of the origin of the goods or services.
- If a Community trade mark is not registered in colour but the proprietor has used it extensively in a particular colour so that it has become distinctive in that colour, this is relevant to the global assessment of likelihood of confusion and unfair advantage. The fact that a third party is itself associated with the same colour that is used for the alleged infringing activity is also relevant to the assessment.
These principles were applied by the Court of Appeal.
Decision of the Court of Appeal
The Court first commented that the shaded logo did not seem to be a ‘very promising basis’ for an argument of use of the wordless mark. The word ‘Specsavers’ superimposed on top of the wordless logo was distinctive given the prominent lettering and contrasting colours.
However the ‘powerful evidence’ in the case indicated that the overlapping ellipses in the shaded logo had an independent significance, in that they identified the goods and services of Specsavers and prompted the average consumer to think of the goods and services of Specsavers. Therefore the addition of the Specsavers word did not alter the distinctive character of the wordless mark as registered.
The evidence before the Court included evidence that:
- Specsavers had made very extensive use of the composite logo in all aspects of its business over a number of years (for example, in 2009 Specsavers spent £45 million on advertising).
- None of Specsavers’ competitors used a logo which was remotely similar to the composite logo or to the wordless mark; Specsavers was not seeking to secure a monopoly in a commonplace background in the marketplace.
- Asda had apparently specifically targeted Specsavers in developing its advertising campaign, evident with the early design options being described in internal documents as “Asda version of Specsavers – rip off”, “Specsavers Logo” and “close to Specsavers”. This gave rise to a strong inference that Asda understood and recognized that the wordless mark denoted Specsavers even with the words ‘ASDA Opticians’ emblazoned on top.
- The word ‘Specsavers’ did not stand out from a distance; rather it was the overlapping green ellipses that caught the eye.
In response to concerns that the decision would result in a plethora of trade mark applications to register relatively commonplace background shapes, the Court emphasised that it would in general be unlikely that background shapes would be perceived by the average consumer as an indication of origin. This happened to be an unusual case supported by convincing evidence.
Implications
While a positive conclusion for Specsavers, it is clear that the decision does not signify a liberalization of the law of ‘genuine use’ and should not be taken as a precedent on use of a composite mark being deemed to be genuine use of a background/wordless logo mark. Rather, the decision is on foot with other decisions which involve multiple marks being used on products. Provided they can be shown to have developed their own distinctive character there is not reason why they cannot be registered or in this case shown to have been used.
In exceptional circumstances, where evidence exists that the background/wordless logo in a composite mark identifies the brand owner and the average consumer perceives it as indicating the origin of the goods and services as supplied by the brand owner, it may be possible to rely on use of a composite mark to demonstrate genuine use of a background/wordless logo. This is likely to be the case only for very bespoke and recognisable background/wordless logos that have been used as part of extensive marketing and promotional campaigns over a number of years.
In any event brand owners should ensure that they make use of their marks in the form in which they are registered to avoid them being challenged and/or revoked for non-use.
This article was prepared by Farah Mukaddam (Farah.Mukaddam@nortonrosefulbright.com) of Norton Rose Fulbright’s (London) Dispute resolution group.
