For the third time in the space of one year1, the CJEU has ruled on issues concerning genuine use of trademarks under European trademark law. Importantly, it held that a mark that is registered in black and white but consistently used in a specific color may see its protection influenced by that fact. At the same time, where a potential infringer uses a sign in its own corporate color, that fact can also be taken into account when ruling on whether there is confusion or free-riding. Furthermore, use of that corporate color can amount to "due cause" in the context of free-riding.

Specsavers, a UK-based chain of opticians, use the following corporate logo:

Click here to view logo.

This is protected by means of several Community trademarks including the following blank logo:

Click here to view logo.

The Asda supermarket chain was the defendant in the UK litigation leading to the referral. Asda had used the following logo to promote the optician's stores in its supermarkets:

Click here to view logo.

Two main questions were before the Court. First, whether use of the double oval logo always jointly with the word "Specsavers" constituted genuine use of the blank logo shown above. Second, whether the use of the color green by both Specsavers and Asda had an impact on the assessment of likelihood of confusion and of taking unfair advantage.

Genuine use issue

The answer to the first main question dealing with genuine use was, in principle, clear after the recent judgment in Colloseum Holding. In that case, which concerned the famous Levi's tab sewed into the seam of jeans pockets and registered in blank but used with the word "LEVI'S" on it, the Court had said that a mark that is used only as part of a composite mark or in conjunction with another mark is nevertheless used as such, provided it is as such perceived as distinctive. The outcome in today's judgment is broadly consistent with that ruling.

Slightly deviating from Colloseum, however, the Court held that use of a blank logo with a "superimposed" word mark was use in an altered form – and not use of the mark in conjunction with another. Use in an altered form maintains a registration if the form used does not have a different distinctive character from what is registered. The addition of a prominent word mark to a blank logo would normally be expected to be found to have an impact on the distinctive character of the sign. However, today's judgment must be read as meaning that where a blank logo, even when used in conjunction with a word mark, is recognized by consumers as a trademark in its own right, the addition of the word mark is not deemed to be a significant alteration of its distinctive character – and the trademark registration for the logo is therefore maintained.

Impact of colour used by claimant and defendant

The second main question concerned the impact of color on the issue of infringement. Specsavers had long used its logo in green. Asda's widely used corporate color was also green. With respect to both usages, the CJEU confirmed that they were part of the circumstances to be taken into account when considering whether there was a likelihood of confusion, or a taking of unfair advantage.

As regards the use by Specsavers of a green version of its Community trademark, the practice among EU member states differs as to whether the fact that a mark is registered in black and white but used in a specific color has an impact on the scope of protection of that mark. The scope can be greater as against junior signs in similar colors – or, vice versa, lesser where the junior sign is used in an entirely different color. In many Member States a mark registered in black and white which is genuinely used will be enforceable against a junior mark used in any color. This approach has in effect, been overruled and greater importance been given to how the senior mark is actually used  in the marketplace.

The use of green by Asda for its logo would therefore have to be considered even more similar to Specsaver's logo because the colors coincided. However, the Court held further that, where the potential infringer is itself commonly associated with the color used for the sign, this can potentially counteract confusion or association with the earlier sign. Moreover, it can constitute due cause for the use of the junior sign. Whether this is the case, is for the national court – here the UK Court of Appeal – to decide. Caution should be exercised however; the court is not saying that the use of a long-standing and well known corporate color will automatically lead to a finding of non-infringement.