A recent ruling from Europe's highest trade mark court in the battle between Specsavers and Asda has affirmed the advantage of registering logos and brand names separately - whether or not they are in fact always used together.
In 2009, Asda launched an advertising campaign which included the following slogans and trade marks;
- "Be a real specsaver at Asda"
- "Spec saving at Asda"
- Click here to view image
Specsavers subsequently sued for trade mark infringement based on its ownership of certain trade marks, including the following Community Trade Marks (CTMs);
- Click here to view image ("the wordless mark")
- Click here to view image ("the combined mark")
Although the spectacles mark and the combined mark were registered in black and white, Specsavers almost always used them in green.
The Court of Appeal held that there was no likelihood of confusion between Asda's use of the logos and slogans and Specsavers' trade marks. However, it did find that Asda's use took unfair advantage of the reputation or distinctive character of Specsavers' trade marks and that Asda had the intention of benefiting from their power of attraction. Instructions to Asda's external marketing agency included "Can you work up what an Asda Opticions logo would look like in Specsavers style please?", while there was other evidence that Asda intended to "live dangerously". Accordingly, Asda was found to have infringed Specsavers' trade marks.
Asda counterclaimed that the spectacles mark should be revoked for non-use, on the basis that Specsavers had not used it for five or more years in the EU. Specsavers had not actually used the spectacles mark by itself, but always in the form of the combined mark (i.e. with the word Specsavers superimposed across it).
FINDINGS OF THE EUROPEAN COURT OF JUSTICE
The Court of Appeal referred a number of questions to the Court of Justice of the European Union (CJEU) to determine (i) whether Specsavers' use of the combined mark could constitute use of the spectacles mark, and (ii) the relevance of Specsavers' and Asda's use of the marks in green.
The CJEU held that:
- The use of the combined mark could still constitute use of the spectacles mark. It did not matter that the spectacles mark had not been used by itself, but only with the additional element of the word "Specsavers" superimposed on it.
- It was a relevant consideration that, though registered in black and white, Specsavers' trade marks had been used extensively in green. Asda's use of green in its logos contributed to the likelihood of Asda causing consumer confusion and taking unfair advantage of Specsaver's trade marks.
- This decision confirms the importance and usefulness of having separate registrations for your logos from your word marks. At Mishcon de Reya, our general recommendation has always been that word elements of trade marks and logos are registered separately in order to provide you with the broadest possible infringement rights - the court will look at the mark as registered.
- If you change the way you use your logo you must seek advice on whether a new trade mark application is required.
- Registering your trade marks in black and white normally gives you the broadest scope of protection. If your mark becomes synonymous with a particular colour (such as purple for Cadbury's or red for Vodafone) that will still be taken into account in assessing infringement.
- Do not design marketing campaigns based on your competitors' branding! Any intention to sail close to the wind is not likely to be looked upon favourably. If you are aware that an aspect of your marketing and advertising material either directly or indirectly refers to another company's branding, then seek full legal advice prior to your launch.