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Tuesday, 31 January 2012

Breaking news: Specsavers v Asda goes to European Court of Justice

Snowy never could decide whether
she needed glasses for reading Court
of Appeal decision ...
The Court of Appeal for England and Wales has just given judgment in Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] EWCA Civ 24.  This Kat, who said that Specsavers must have felt pretty sore about the trial decision of Mr Justice Mann (see earlier post here), is not surprised to see that the Court of Appeal -- for whom IP specialist Lord Justice Kitchin delivered the judgment -- has upheld two of its grounds of appeal and has stayed a third, pending a reference to the Court of Justice of the European Union for a preliminary ruling on the following five questions:
A. Where a trader has separate registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?

B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?

C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?

D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?

E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination
of colours which it is using for the sign complained of?
This Kat has not had time to read the 187 paragraph judgment yet (at the time of posting, it wasn't yet on BAILII but you can read it here), but will return to it tonight unless one or other of his colleagues kindly gets there first and writes the decision up for him.

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