With decision of July 18, 2013 the European Court of Justice (“ECJ) ruled on the requisite of “genuine use” of a registered trademark and on the importance of colour in assessing likelihood of confusion between two trademarks.
The decision is the result of two different questions referred to the ECJ by a UK Court of Appeal dealing with an alleged infringement of Community trademarks registered by the Specsavers group.
Firstly, ECJ was requested whether the use of a Community figurative complex trademark constituted by a shape used in conjunction with the word “Specsavers” which is superimposed over it (fig. 1) can amount to “genuine use” of the shape figurative trademark (fig. 2) pursuant to sections 15(1) and 51(1)(a) Reg. EC/207/2009 on the Community trademark.
Click here to view fig 1. and fig. 2.
In this regard, ECJ stated that “the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled […] to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered”.
The second question concerned the relevance of the use of a colour in the global assessment of the likelihood of confusion. In particular, in assessing the confusion with an allegedly infringing sign used in green colour (Fig. 3 below), ECJ was enquired over the relevance of the use of the green colour in the earlier trademark "Specsavers", that was registered in black and white only.
Click here to view fig. 3.
In this regard the ECJ ruled that in case “a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision”.