SPECSAVERS – THE DECISION

The Court of Justice of the European Union (CJEU) issued its decision in Case C-252/12 Specsavers International Healthcare Ltd and others v Asda Stores Ltd on 18 July 2013, an infringement action concerning advertising campaigns ran by the well-known UK supermarket, Asda (a subsidiary of Walmart), for its optical products that targeted the popular high-street opticians Specsavers.

The Court held, amongst other issues, that where a Community trade mark (CTM) was registered in black and white, the fact that it has been used extensively in a particular colour or combination of colours may be taken into account when considering the likelihood of confusion and unfair advantage in the context of infringement proceedings against a third party. Conversely, if the third party is itself associated with that particular colour or combination colours and uses the colour(s) in relation to the allegedly infringing sign, this should also be borne in mind.

UK INTELLECTUAL PROPERTY OFFICE

In light of this ruling, the UK Intellectual Property Office (UKIPO) released a Tribunal Practice Notice (TPN 1/2014) at the beginning of this year, stating that the judgement also applies to infringement proceedings concerning UK national marks.

Furthermore, the UKIPO extended the application of the decision to opposition and cancellation proceedings. This, in itself, is unsurprising given that the opposition, cancellation, and infringement provisions mirror each other, but the application of the findings of the CJEU to the opposition context is of note.

The TPN begins by explaining the key difference in the analysis of the likelihood of confusion in infringement and opposition proceedings: in the case of infringement, the question of likelihood of confusion centres on the earlier mark as registered (now also taking into account whether it has been used extensively in a particular colour(s)) compared with the later mark as used. However, in oppositions, the comparison is between the earlier mark as registered and the later mark as applied for, bearing in mind “all the circumstances in which the [latter] might be used” (emphasis added).

Consequently, where the earlier mark is registered in colour or, following Specsavers, where it has been shown that a particular colour(s) forms part of the distinctive character of the earlier mark even though it may have been registered in black and white, the actual or potential use of the later mark in the same colour(s) may be considered to be relevant.

Another corollary of this difference in approach is that, given that all normal and fair future potential uses of the later mark must be taken into account in opposition proceedings, any evidence relating to the existing use of the later mark in different colour(s) would seem to be irrelevant.

Where an earlier mark is registered in black and white and has not been used, or has been used in respect of colour(s) but the extent and consistency of such use is not sufficient to show that the colour(s) formed part of the distinctive character of the mark, colour will be irrelevant. The comparison, in that scenario, would be between the earlier mark as registered and the later mark as applied for.

WHAT DOES THIS MEAN?

As a result of the decision and the TPN, where an earlier mark, which has been relied upon as a basis for an infringement action or UK opposition or cancellation proceedings, is registered in black and white but has been used extensively in another colour(s), evidence of extensive use of the mark in that colour(s) may be submitted to strengthen a likelihood of confusion or unfair advantage argument. The question then arises as to the nature and extent of this evidence: what should it consist of and how much is enough to show that the colour(s) have become part of the ‘distinctive character of the earlier mark’? Although this specific point has not yet been addressed by the Registry or the courts, it should not pose a significant problem. The question appears to be very similar to that of proving acquired distinctiveness of a mark, and the types of evidence and standards of proof applicable in that area of the law would seem to apply here also.

The judgement of the CJEU in Specsavers is very much limited to infringement proceedings and, in the absence of clarification from OHIM, it is not yet clear whether the decision also applies to opposition and cancellation proceedings concerning Community trade marks. Whilst it is not uncommon for the CJEU to phrase its judgements so that they apply only to the facts in a particular case, given that the opposition, infringement, and cancellation provisions mirror each other both in the UK and at OHIM, and principles developed in any one of these areas are generally seen to be automatically applicable to the others, there is no reason to believe that Specsavers would not apply to CTM opposition and cancellation proceedings too.

The decision from the CJEU and the clarification offered by the TPN should be welcomed. It recognises the commercial reality in which businesses operate, where trade marks may be tweaked or modified, including a change in their colours, every so often as part of a larger re-branding exercise. Furthermore, in accepting evidence that a particular colour(s) has come to be perceived by customers as part of the distinctive character of a mark, the Registry and courts are simply acknowledging and protecting what has already occurred in the ‘real world’ marketplace.