Court of Justice of the European Union, 18 July 2013 (Case C-252/12)
In 2009, Asda, one of the UK’s largest supermarket chains and a subsidiary of the American retail company Walmart, launched an advertising campaign promoting its range of optical products which targeted the well-known UK opticians, Specsavers. As part of that campaign, Asda used the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at ASDA’, as well as the following logos:
Click here to view logos.
As a result, Specsavers brought an action before the High Court of Justice of England and Wales against Asda, alleging infringement of its various Community trade mark (CTM) registrations. These included the following ‘wordless logo mark’:
Click here to view mark.
At first instance, the High Court ruled that Asda had not infringed Specsavers’s marks and revoked the wordless logo mark for non-use, since it did not consider that Specsavers had genuinely used the logo in that format, it always being used with the ‘SPECSAVERS’ wording for instance. Specsavers appealed to the Court of Appeal.
The Court of Appeal decided that it was necessary to refer a number of questions to the Court of Justice of the European Union (CJEU) in order to decide on the case, including the question whether the wordless logo mark should be revoked for non-use. Its questions were essentially:
Can there be genuine use of a logo mark where it has only been used together with a word mark superimposed over it and, furthermore, the combination of the two marks is itself registered as a CTM?
- In assessing likelihood of confusion and unfair advantage, can the fact that a proprietor has used a mark extensively in a particular colour such that it has become associated with it, despite the fact that the mark was only registered in black and white, be taken into account?
- In assessing likelihood of confusion and unfair advantage, can the fact that the alleged infringer is also associated with that particular colour be taken into account?
Firstly, the CJEU referred to Article 15(1) of the Community Trade Mark Regulation (CTMR):
‘If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the [European Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non use.
The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’.
The Court pointed out that Article 15(1)(a) is applicable here, given that the imposition of the word ‘Specsavers’ over the wordless logo mark means that certain parts of the latter is hidden from view. As a result, such use is not a mere juxtaposition of the two marks but changes the form in which the wordless logo mark is registered.
The Court then explained that ‘distinctive character’ within the context of the CTMR means that a mark performs the ‘essential function’, namely it allows the consumer to identify the goods and services offered under that mark as coming from a particular trade entity and can therefore distinguish it from other entities. That distinctive character may result from use of the mark as a component of a registered mark or together with another registered mark. In either case, it is sufficient that, as a consequence of such use, the relevant public perceives the mark as an indicator of trade origin. The Court referred to its earlier decisions in Société des produits Nestlé SA v Mars UK Ltd (Case C-353/03, 2005), in the context of acquired distinctiveness, and Colloseum Holding AG v Levi Strauss & Co (Case C- 12/12, 2012), which concerned genuine use and dealt with very similar questions.
In summary, where a logo mark has only been used together with a word mark superimposed upon it, and this combination has further been registered, there can be genuine use of the logo mark as long as the differences between the form in which it has been used and the form in which it was registered do not change the distinctive character of the mark as registered.
Association of CTM proprietor with use of particular colour
In answer to this question, the Court first reiterated the requirements of the ‘global appreciation’ approach in relation to the assessment of likelihood of confusion, and emphasised that the perception of the average consumer of the goods and services at issue plays a decisive role. Where a mark has been registered in black and white, the colour in which it is later used would affect how the average consumer perceives that mark and is therefore liable to increase the likelihood of confusion between the earlier and later marks. Consequently, the use of the mark in colour should be taken into consideration.
Turning to the question in relation to unfair advantage, a global assessment must also be carried out, taking into account all relevant factors. In this instance, it is clear that the similarity between the Specsavers’s marks and Asda’s promotional materials was created intentionally in order to create an association between the two trade signs in the mind of the average consumer. Consequently, the fact that Asda used a similar colour to that commonly associated with Specsavers with the intention of taking unfair advantage of the reputation and distinctiveness of its marks is a factor to be taken into account.
Association of alleged infringer with that particular colour also
The Court reiterated its earlier dicta that the global appreciation approach, both in the context of assessing the likelihood of confusion and unfair advantage, requires all relevant factors to be taken into consideration. Furthermore, those assessments must also take into account the precise context in which the allegedly infringing sign was used. In particular, the fact that the alleged infringer is also associated with the colour in question (green) may influence the relevant public’s perception, thereby also affecting the existence of a likelihood of confusion. It is therefore a relevant consideration.
It is now for the Court of Appeal to decide on the case in light of the CJEU guidance.