Specsavers have applied to register the trademark “Should’ve” at the UK IPO.
It is a contraction of their familiar slogan: “Should’ve gone to Specsavers”. The case has highlighted a recent tendency towards trademarking common words. Although this strategy is not new. As early as 1993, Carlsberg registered “Probably” as a trademark in relation to their slogan “Probably the best beer in the world”.
Key Trademark requirement
Generally, a key requirement for a trademark to be registered is distinctiveness. The more abstracted a trademark from the goods or services it relates to, the higher its degree of innate distinctiveness.
For the Specsavers’ application, the arbitrary connection between “should’ve” and the goods and services applied for, has not been called into question by the UK IPO examiner, despite the fact that “should’ve” is a common English word. Commentators have expressed surprise that the application was accepted simply on the innate merits of the mark, without Specsavers having to provide evidence of use.
Specsavers have filed their UK application in five classes; broadly covering glasses, hearing aids, stationery, retail services and medical services. Concern has been raised about the breadth of protection that will be afforded if registration is granted. Whilst protection in the context of glasses and opticians’ services may be justifiable by the association of the word with Specsavers’ marketing in the mind of the consumer, it is unclear whether the mark would be enforceable with respect to the unrelated good and services.
Interestingly, in the U.S.A., CitiGroup recently failed to obtain an injunction against AT&T over their alleged infringement of CitiGroup’s mark “THANKYOU”, in the context of consumer reward programs. CitiGroup were unable to establish likelihood of confusion for the phrase despite the similarity of the “AT&T Thanks” scheme. If the same principles are applied here, it suggests that the protection afforded to Specsavers’ mark (if granted), may in fact provide little leverage in practice.
An interesting aspect of the Specsavers’ registration is the concurrent application for “shouldve”. Given the commercial reality of the virtual world that marketers seek to dominate, it is suggested that this mark is intended to ring-fence the Twitter handle #shouldve, that Specsavers use to promote their products. We will watch this space, as other companies follow suit. It can also be assumed that the UK IPO are rapidly re-writing their practice manual, in anticipation of the onslaught.
The Specsavers application remains open to formal oppositions being received against it until 12 October 2016. The potential opponents are already lining up.