In the long running dispute between Specsavers and Asda the CJEU has ruled in favour of trade mark owners on the issue of genuine use within Articles 15(1) and 51(1)(a) of the Community Trade Mark (CTM) Regulation. It found that there may be “genuine use” where a CTM is used only in conjunction with a word mark which is superimposed over it (and the combination of those two marks is itself registered as a CTM), provided that the differences between the form in which the first CTM is used and that in which it was registered do not change the distinctive character of the mark as registered. Further the CJEU held that when a particular colour has been used extensively with a mark such that the mark has therefore become associated with that particular colour, then colour is a relevant factor when carrying out the “global assessment” test for infringement, based on likelihood of confusion and/or unfair advantage. The fact that the defendant used a similar colour to Specsavers with an intention of taking unfair advantage of the distinctive character and reputation of Specsavers’ marks was also significant. Additionally, where the defendant is also associated with that colour, this is also relevant to the “global assessment” test and could reduce the likelihood of confusion.
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