Green-tinted specs: CJEU rules on Specsavers logo questions

United Kingdom

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The Court of Justice of the European Union (CJEU) has handed down its judgment in the trade mark litigation between Specsavers and Asda (Case C-252/12, Specsavers International Healthcare Ltd & others v. Asda Stores Ltd).

The case concerned a 2009 marketing campaign by Asda to promote its in-store opticians. The campaign featured the straplines 'Be a real spec saver at Asda' and 'Spec savings at Asda', together with a double ellipse device (in Asda's corporate green colour) reminiscent of Specsavers' well-known logo.

Specsavers' claim for trade mark infringement received a lukewarm response in the High Court. Although the strapline 'Be a real spec saver at Asda' was held to infringe, the claim relating to Asda's logo was dismissed in its entirety. Crucially, one of the registered trade marks relied on by Specsavers (the so-called "wordless logo mark" consisting of its overlapping ovals logo, but without the word 'Specsavers' superimposed) was declared invalid on the grounds of non-use.

On appeal to the Court of Appeal, the case was decided largely in Specsavers' favour. All elements of Asda's campaign (including the Asda logo) were held to infringe Specsavers' trade marks by taking unfair advantage of their reputation. However, the Court was unable to determine the validity of Specsavers' wordless logo mark as it struggled to apply the test of "genuine use" to a mark that had been used extensively as part of a composite logo, but never on its own.

The CJEU was therefore asked to clarify whether the use of a complex logo comprising a figurative element and a word element (in this case, the overlapping ovals and the word 'SPECSAVERS' superimposed) could amount to "genuine use" of the figurative element alone, as registered. The Court reiterated the principle that, where a mark is used in a different form to that in which it has been registered, the use of the variant could only be "genuine use" if that variant did not alter the distinctive character of the mark as registered.

Applying its previous decisions in Case C-12/12 Colloseum Holding and C-553/11 Rintisch concerning combined marks, the Court accepted that Specsavers' use of its composite logo could be considered a "genuine use" of the underlying wordless logo mark if, in fact, consumers perceived the wordless logo as being distinctive of Specsavers. Whether this was in fact the case was left for the Court of Appeal to decide.

In the course of the proceedings, the parties also disagreed on the relevance of colour in the global assessment for confusion and unfair advantage. Specsavers had relied on a number of logo marks which were not registered in colour, but in black and white. In practice, however, Specsavers had always used its logo in green, and it was common ground that the colour green was widely associated with Specsavers. In recognition of this, Asda adopted the colour green for its campaign to create an association with Specsavers.

The Court of Appeal sought guidance from the CJEU on whether Specsavers could rely on the colour green as a point of similarity even where its marks were registered in black and white. The CJEU reiterated the principle of "global assessment" (that is, taking into account all factors relevant to the circumstances of the case) and recognised that colour affects the way marks are perceived by consumers in practice. As a result, the CJEU thought it would be illogical to ignore similarities in colour where the brand owner had used its mark extensively in a particular colour, with the result that it has become widely associated with that colour. Consequently, Asda's choice of a similar colour was relevant to the assessment of confusion and unfair advantage.

On the other hand, it also followed that Asda's own existing reputation in the colour green had to be taken into account in the global assessment. The fact that Asda habitually used green in its own branding could reduce the likelihood of confusion or association, if the public interpreted the colour green as being distinctive of Asda as opposed to Specsavers.

Comment

The CJEU's ruling on "genuine use" is unsurprising in view of its recent decisions in Colloseum and Rintisch, neither of which was available to the Court of Appeal at the time it sought guidance. Brand owners will welcome the recognition that device marks which are only used as part of composite marks can still be regarded as having been "genuinely used", provided that they have become distinctive in themselves. However, it remains to be seen how strictly national courts will apply this test in considering the validity of registered marks which, despite being well-known as part of composite logos, have never been used in their registered form.

The ruling on the question of colour will also be a relief for many brand owners whose marks are registered only in black and white (that is, without colour limitation) but used extensively in a particular colour or colours. A different ruling would have cast doubt on the value of "colour-neutral" registrations which are, in fact, broader in their scope of protection than registrations limited to a particular colour. The CJEU has also recognised that some marks enjoy enhanced reputation and distinctiveness over and above what is depicted on the trade marks register, and that such factors must be taken into account if the "global assessment" is to reflect the realities of the marketplace.