This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
Specsavers rescues its wordless logo mark as court battle concludes
The Court of Appeal has handed down its decision in the final instalment of the long-running court battle between Specsavers and Asda (Specsavers & ors v Asda Stores EWCA Civ 1294). To re-cap, this case arose from a 2009 marketing campaign by Asda for its in-store opticians' services, which featured the straplines 'Be a real spec saver at Asda' and 'Spec savings at Asda', alongside a logo comprising two ovals similar to the well-known overlapping ellipses logo used by Specsavers for many years.
Readers may recall that the trial judge, Mann J, had revoked one of Specsavers' trade mark registrations on the grounds of non-use. That registration consisted of the outline shape of Specsavers' double ellipse logo, without words (termed the "wordless logo mark"). In determining whether the mark should be reinstated, the Court of Appeal sought guidance from the Court of Justice of the European Union (CJEU) on whether a wordless logo mark could be regarded as having been 'genuinely used' if it had only ever been used as part of a composite logo with a word mark superimposed on it (in this case the word 'Specsavers'), but never on its own as registered.
The CJEU found that the use of a composite logo could amount to "use" of the underlying logo element, provided that the use of the composite (or, put another way, the addition of words) did not alter the distinctive character of the wordless logo as registered. This requirement would only be satisfied where the wordless logo element retained an independent distinctive role, such that consumers perceived that element in itself as indicating the goods and services of the proprietor (my earlier article on this case gives a more detailed overview of the CJEU reference; you can access it here.)
At the resumed Court of Appeal hearing (which Asda did not attend, having settled its dispute with Specsavers), the Registrar of Trade Marks intervened in its capacity as the 'guardian' of the trade marks register, arguing in favour of revocation. The Registrar expressed a concern that, should Specsavers' mark be reinstated, this would set an unhelpful precedent encouraging other brand owners to seek registrations for relatively commonplace outline shapes of logo marks.
Giving the lead judgment, Kitchin LJ recognised that the word 'Specsavers' was distinctive and prominent in the composite mark. Nevertheless, he took into account the "unusually powerful" evidence of the extensive and long-standing use by Specsavers of its logo and the impact it had on the average consumer. He also recounted the genesis of Asda's campaign, which recognised from the outset that the double ellipse shape would be strongly associated with Specsavers, even when used with different words. Accordingly, Kitchin LJ concluded that much of Specsavers' use of its composite logo also amounted to use of the wordless logo mark, and that the wordless logo did serve to identify the goods and services of Specsavers. The wordless logo element was in itself seen as a trade mark, and not simply as a background.
The decision marks a significant victory for Specsavers, by acknowledging the extensive reputation of Specsavers' logo and its recognition by consumers based on its shape alone. At first blush, it may be seen as welcome news for brand owners wishing to secure broader protection for their logo marks. However, the Court of Appeal was careful to highlight the special facts of this case. It stated that, in most cases, the background of a composite logo mark was unlikely to be perceived as an indicator of origin in itself. In effect, and as Kitchin LJ put it, the court was dealing with an "unusual case" involving exceptionally strong evidence of independent distinctiveness. Accordingly, this decision is unlikely to act as a ground-breaking precedent or materially change the way in which "genuine use" of logo marks is assessed. Trade mark owners wishing to safeguard their wordless logo registrations should still ensure those logos are used in their registered form, to protect them from non-use revocation.