In July 2013 the CJEU announced its ruling on Specsavers -v- Asda, a trade mark infringement dispute dating from 2009. The dispute began when Asda launched a marketing campaign incorporating logos clearly based upon those of Specsavers. As a result of this campaign, Specsavers launched trade mark infringement proceedings against Asda. The initial High Court ruling from October 2010 found that Asda had not infringed Specsavers’ trade marks and, in fact, revoked Specsavers’ plain logo mark for non-use. However, the Court of Appeal overturned this decision and found that Asda's use did infringe Specsavers’ rights. This was not the end of matters, as the Court of Appeal referred a number of questions to the CJEU, designed to help it to rule on the dispute concerning the plain logo mark. This ruling answers those questions.
The CJEU ruling confirms that use of a composite trade mark can constitute use of a registered mark that consists of only one of the components of said composite mark. The genuine use requirement may be fulfilled even when a figurative mark is used only in conjunction with a word mark, and the combination of those marks is itself registered as an independent trade mark. However, this will only be possible when the mark is used in a way that does not alter the distinctive character of the mark as registered. In this case, Specsavers’ use of a composite mark featuring the mark “Specsavers” broadly overlaying the plain logo mark was held to constitute use of the plain logo mark itself.
The ruling also clarifies that extensive use of a trade mark in respect of a particular colour renders that colour relevant in the global assessment of the likelihood of confusion, even if the mark is only registered in black and white, provided that a significant portion of the public associate the mark with that colour. Finally, if the party using a potentially infringing sign is itself associated with a particular colour, then that colour is also relevant for the purposes of establishing the likelihood of confusion, again provided that a significant portion of the public associate the mark with that colour.