The long running dispute between Specsavers and Asda stores has reached a conclusion. The Court of Justice of the European Union in its appeal judgement has ruled in favour of Specsavers on the thorny issue of whether use of the figurative ‘specsavers’ mark (A) constituted use of the registered wordless logo mark (B):
This conflict began in October 2009 when Asda launched a marketing campaign for their optician’s brand. It was alleged by Specsavers that this campaign infringed a number of its community trademark registrations. Specsavers sued for trademark infringement and at first instance the High court held that no infringement by Asda had occurred and in fact, revoked Specsavers’s figurative registrations on the grounds of non-use. However, this initial victory for Asda was short lived and after referring some questions on points of Law to the CJEU, the Court of Appeal subsequently overturned the judgement of the court of first instance.
In the Court of Appeal [Specsavers & ors v Asda Stores  EWCA Civ1294] Lord Justice Kitchin confirmed that use of the ‘Specsavers’ green figurative mark shown at (A) above, did in fact constitute use of the registered black figurative mark at (B) above, since the differences between the trademark as registered and as used were not such as to alter the distinctive character of the registered trademark. Essentially, in order for use of the ‘Specsavers’ green figurative trademark to be held to constitute use of the black figurative registered mark, the elements of the registered trademark (i.e., overall shape of the same) must be distinctive enough within the trademark in use so that it was sufficient to designate the origin of the goods or services in question.
Specsavers produced a wealth of evidence at trial to show that the basic shape of its registered logo had acquired distinctiveness for its goods and services in the relevant market. This included evidence showing that no competitors used a logo with a similar overall shape to that used by Specsavers, and that internal documents from Asda described the potential logo, shown at (C), below, as a “rip-off”, “highly recognisable” and “the Specsavers logo”:
Finally, Lord Justice Kitchin also accepted evidence for Specsavers that, from a distance the relevant consumer associated the overall shape of the green overlapping ellipses with them, and as designating the Specsavers brand.
Initially this reasoning might appear to be fairly dubious application on the basis that it is hard to imagine that the overall shape of the black figurative trademark registered by Specsavers could serve to designate the goods as those of Specsavers’s in the absence of the other two highly recognisable elements of the trademark in actual use, i.e., the word element ‘Specsavers’ together with the green overlapping ellipses. However, the overall shape of the figurative trademark in use was the same as that of the registered trademark, and since the figurative mark was filed in black it was without colour limitation; therefore, use of overlapping ellipses in green colour was held to constitute use of the black figurative trademark.
As stated by Lord Justice Kitchin the reasoning in this case is unlikely to be applicable in the majority of cases involving use of less distinctive logos which lack the strong reputation and distinctiveness of the Specsavers brand. In fact, Lord justice Kitchin explicitly states in his judgement that, in general, ‘it is unlikely that the background of a mark will be perceived by the average consumer as an indication of origin’.