Last month, Specsavers secured acceptance for the sign SHOULD'VE as a registered trade mark in the UK following an unexpected decision by the UK Intellectual Property Office.

The result of this decision awards Specsavers the ability to prevent use of the signs SHOULD'VE and SHOULDVE in relation to a range of goods and services.

On paper, the signs do not fulfil the registrability requirement of being able to distinguish one entity's goods and services from those of another - a generic or non-distinctive sign cannot be registered, as such terms should be available for use by all traders.

A trader can overcome this inherent non-distinctiveness if it can establish that the sign has become distinctive through use, such that the public associates the sign with their goods and services. Specsavers filed significant evidence of continued, targeted and wide-spread use of the signs SHOULD'VE and SHOULDVE in the marketplace, including evidence of the advertising campaign slogan 'should've gone to Specsavers'.

In attempting to demonstrate the acquired distinctiveness of the signs, Specsavers needed to demonstrate that the public associates the signs with their goods and services without any additional matter. As such, evidence demonstrating use of the signs in the slogan 'should've gone to Specsavers' alone should have been supported by evidence of distinctiveness in the signs SHOULD'VE and SHOULDVE apart from that slogan. Nestle had a similar situation in seeking registration for the sign HAVE A BREAK, which was initially refused on the basis that the evidence of use was deemed insufficient to establish acquired distinctiveness of the sign HAVE A BREAK alone, when used separately from the remainder of the slogan, HAVE A KIT KAT.

Whilst Nestle ultimately secured registration for the sign HAVE A BREAK, the case demonstrated the difficulties in securing protection for slogans given their inherent nature as promotional statements rather than indicators of origin. It is very surprising, therefore, that Specsavers has apparently demonstrated acquired distinctiveness in a single generic word alone, and one wonders how long it will take before a third party files an invalidity action.

Considerations on distinctiveness

  • Creative and invented words and logos make the best trade marks, and are most likely to be acceptable for registration. Trade marks that are either generic or descriptive of goods have a much lower chance of registration
  • it is possible to secure registration for a non-distinctive sign, but only by demonstrating that it has acquired distinctiveness - extensive use of the sign alone will be required to achieve registration
  • ensure you keep records of widespread use of the sign, including advertising and marketing material, packaging, labelling, and records regarding income and expenditure under the sign
  • consider whether any of your previously generic signs may now have acquired distinctiveness, and are therefore eligible for registration

This article was first published in the Greater Birmingham Chamber of Commerce Magazine.