The Court of Justice of the European Union (CJEU) has given its ruling in a reference from the English Court of Appeal on two points of interest to brand owners involving the non-use of trade marks and how use of a mark in colour may be relevant to assessing infringement.

Background

Specsavers, the well-known UK High Street opticians, owned the following registered Community Trade Marks (CTMs) in relation to optician services:

  1. SPECSAVERS (Word)
  2. Specsavers - shaded logo
  3. Specsavers - unshaded logo
  4. Specsavers - wordless logo

The logo marks were not limited to (nor did they claim) any particular colour. They had historically been used in a dark green.

Asda, one of the UK’s largest supermarkets, whose branding predominantly features a lighter colour green, ran a marketing campaign to promote its own optician services. This featured a logo with the words ‘ASDA Opticians’ in green writing on two white ovals (not overlapping).  It also featured the same logo with white writing on green ovals.

Asda also used the slogans BE A REAL SPEC SAVER AT ASDA (‘the first slogan’) and SPEC SAVINGS AT ASDA (‘the second slogan’).

It was clear that Asda had intended to target Specsavers in its campaign. Indeed, some of the Asda marketing materials were described internally as ‘Specsavers rip-off’.

Specsavers sued for trade mark infringement, alleging a likelihood of confusion between the marks used by Asda and its CTMs; and also that use of the Asda marks without due cause took advantage of the distinctive character/repute of those CTMs.

Issues

At first instance the English Court held there was no confusion between the signs used by Asda and Specsavers’ marks. The Court of Appeal agreed, noting that all circumstances of Asda’s use had to be taken into account (signs used by an alleged infringer are not to be considered stripped of context).

The case turned on the reputation enjoyed by the Specsavers marks. The Court of Appeal confirmed that the first slogan plainly called to mind the SPECSAVERS mark. It also overturned the trial judge’s finding that the second slogan did not infringe: the marks were very similar, and a link was inevitable. Similarly, the Asda logos created a link with Specsavers’ own logos. Given the significant reputation in the Specsavers’ marks, all marks used by Asda gave it, without due cause, an unfair advantage.

Asda had alleged that Specsavers’ wordless logo mark was revocable for non-use. The trial judge agreed: the only use of its logo that Specsavers could show featured the word SPECSAVERS across the ovals, which the judge held altered the distinctive character of the mark and could not therefore constitute use of the wordless logo. However, the Court of Appeal noted the inconsistency of the CJEU in previous cases dealing with this pivotal question.

Specsavers argued that its logo mark had an enhanced reputation when used in its wellknown green format: for Asda to use similar marks in the same colour (albeit a different shade) increased the risk of confusion. The Court of Appeal acknowledged that a mark can acquire an enhanced distinctive character through use, and that colour could well be an important part of that. However, it held that the position was unclear and that a reference to the CJEU was required.

The questions referred

The Court of Appeal asked, essentially:

  1. Can use of the Specsavers shaded logo mark constitute use of the wordless logo, and would there be any difference if a) the word mark was superimposed over the wordless logo; or b) if the combined word/logo was also a registered mark?
  2. Can the enhanced reputation of a registered mark in a particular colour be taken into account when assessing infringement under Article 9(1)(b) and (c) of the CTM Regulation, even though the mark is not registered in any particular colour?
  3. Is the colour used by a defendant for a sign alleged to infringe relevant in the global assessment of the likelihood of confusion/unfair advantage? If so, is it relevant that the Defendant itself is associated with the colour used?

The CJEU’s response

As regards the query on use, the court held that superimposing words onto the wordless logo changed the form in which the latter mark was registered, since this involved actually covering certain parts of the logo with the words. However, use of a mark in a form differing to that registered was acceptable – to the extent that the distinctive character of the mark in the form registered was not changed. Use of the wordless logo with the word SPECSAVERS superimposed on top may therefore be considered use of the wordless logo to the extent that the mark as registered (ie, without words) always refers in that form to the goods of the proprietor covered by the registration. This was a matter for the English Court to assess. This conclusion was not affected by the fact that the word mark and the combined word/logo are also registered.

The CJEU acknowledged recent cases on non-use, in particular Colloseum v Levi (1) and case Bernhard Rintisch v Klaus Eder (2). Indeed, the CTM Regulation gives some fl exibility by allowing variations of marks (that do not alter their distinctive character) to constitute genuine use, thereby enabling brands owners to adapt their marketing/promotion techniques to at least some degree without fear of their marks being vulnerable to attack on the grounds of non-use.

As regards the questions on colour, the CJEU reiterated accepted principles that a global assessment is required when assessing the likelihood of confusion between two marks. This assessment must be based on the overall impression given by both marks, bearing in mind in particular their distinctive and dominant elements. How the marks are perceived by consumers plays a decisive role in this assessment. The CJEU held that (even if registered in black and white) the colour in which a mark is used affects how consumers perceive it and therefore may increase the likelihood of confusion between the mark and the sign alleged to infringe.

When assessing unfair advantage, a global assessment is again required. The CJEU acknowledged that Asda’s signs were intended to create an association in consumers’ minds with Specsavers. The fact that Asda used a similar colour to that used by Specsavers with the intention of taking advantage of the distinctive character/repute of Specsaver’s marks must be taken into account as a relevant factor.

Regarding the relevance of Asda being associated with the colour green in its own right, the CJEU noted that assessments of a likelihood of confusion/unfair advantage must take account of the precise context in which an allegedly infringing sign is used (referring to case No C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd). The fact that Asda is itself associated with the colour used for the sign complained of may be important in assessing the likelihood of confusion/unfair advantage. The CJEU acknowledged that it is not inconceivable that such a fact could infl uence the public’s perception of the signs at issue (eg, it could result in a lower likelihood of confusion to the extent that consumers would perceive it as Asda’s colour) – ultimately this is a matter for the English Court of Appeal to determine. Asda’s association with the colour green could also be relevant in determining whether use of the signs complained of has ’due cause‘ when assessing unfair advantage/detriment under Article 9(1)(c).

Comment

The CJEU has highlighted, as ever, that certain elements of the dispute must be assessed by the Court of Appeal itself. How that court will apply the CJEU’s guidance remains to be seen. Nevertheless, the ruling is generally good news for brand owners, particularly on the point of use. It is in line with recent CJEU judgments confi rming that seeking separate registration of individual elements of composite word/logo marks remains a sensible strategy.