Should the extensive use of the SPECSAVERS logo (left) be regarded as use of the black logo (right) consisting of a pair of overlapping ovals, so that the latter mark can
be regarded as having been put to genuine use? The
answer is yes, according to Lord Justice Kitchin for the Court of Appeal in Specsavers
& ors v Asda Stores  EWCA Civ1294.
|The Shaded logo (left) and Wordless logo (right)|
“31. In view of all the foregoing considerations, the answer to the first three questions is that [...] the condition of “genuine use”, within the meaning of [Articles 15 and 51], may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered. ”
Unlike FIFA, the courts don't allow
their arbiters to accept sponsorship
22. Reverting now to the particular issue before us, in my judgment it follows from all of the foregoing that the national court is required to consider the use which has been made and to ask itself whether the differences between the form in which the mark has been used and that in which it is registered do not change the distinctive character of the mark as registered. In carrying out that exercise the court may ask whether the use relied upon is such that the trade mark as registered (here the Wordless logo mark) serves to identify the goods or services as those of a particular undertaking (here the Specsavers group). Put another way, if the mark as registered (here the Wordless logo mark) is used only as part of a composite mark (here the Shaded logo mark), the use must be such that the mark as registered is itself perceived as indicative of the origin of the goods or services. Moreover, it is permissible to take into consideration that the mark has always been used in a particular colour in so far as this affects how the mark is perceived by the average consumer.
23. I think it is fair to say that use by Specsavers of the Shaded logo mark does not seem to be a very promising basis for an argument that they have also used the Wordless logo mark. The word Specsavers is distinctive and appears in prominent letters in a contrasting colour across the centre of the mark. Nevertheless, as the Court of Justice has explained, consideration must be given to all of the use that has been made of the Shaded logo mark, and to the perception of the average consumer. In the particular circumstances of this case there is, perhaps unusually, powerful evidence of both.
|Having started with overlapping ovals, ASDA separated |
them to deliberately avoid a "rip off"
34. Drawing the threads together, I have come to the conclusion that, in the rather unusual circumstances of this case and notwithstanding my initial impression to the contrary, Specsavers have established that much of the use they have made of the Shaded logo mark including, in particular, its use on signage, does also constitute use of the Wordless logo mark, for the evidence in this case shows that it has been such that the Wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the Wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers. In short, much of that use has been such that the differences between the Shaded logo mark and the Wordless logo mark have not changed the distinctive character of the Wordless logo mark; and the Wordless logo mark has itself been seen as a trade mark and not simply as background. It follows that Specsavers have established that they have made genuine use of the Wordless logo mark.
37. Finally the Registrar [who was invited to intervene in the hearing, and who argued for revocation of the Wordless mark] has invited us to make it clear that each case must be determined on its own facts, and has expressed a concern that were we to allow the appeal, he may be faced with many applications to register relatively commonplace outline shapes of logo marks. For my part, I am entirely content to emphasise that each and every case must be decided on its own facts and in the light of all the relevant circumstances. I would go further and say that, in general, it is unlikely that the background of a mark will be perceived by the average consumer as an indication of origin. This is, however, an unusual case and Specsavers are supported in their appeal by what I consider to be the convincing evidence I have described.
38. I would therefore allow the appeal.
This post originally issued with a link to a version of the judgment which has since been superseded. Paragraph 33 contained two errors which were quickly corrected by the judge, and the version now on BAILII, is the correct text. The sense of the fourth finding in paragraph 33, as interpreted by the IPKat above, remains unchanged.