A clear vision of genuine use: Specsavers v Asda (again)

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 [2014] EWCA Civ1294. 

The Shaded logo (left) and Wordless logo (right)

Yesterday's elliptical judgment looks to be the final instalment of the Specsavers v Asda saga. If you think you've read about this case before, that may be because the IPKat reported on initial skirmishes concerning the early marketing activities of the “Asda Opticians” brand here and here, then reported the High Court judgment of Mann J. here, the main decision and referral to Europe by the Court of Appeal here, followed by a costs ruling here and then the CJEU decision here. And after all that the parties settled (Specsavers having prevailed on most of the issues to date). The settlement however allowed Specsavers to continue their appeal against the revocation of the “Wordless” (black logo) CTM for non-use. This final decision is limited to that issue.

The CJEU answered the set of questions dealing with the use of a superimposed word mark over a graphical logo, and whether this could constitute genuine use of the logo such as to avoid revocation, as follows:

Unlike FIFA, the courts don't allow
their arbiters to accept sponsorship

“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. ”

Summarising the CJEU’s answer, and having taken some guidance from the answers provided on the question of how significant colour might be in assessing likelihood of confusion) Kitchin LJ put the task before the Court as follows:

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.

First, he noted, the Shaded logo mark had been used very extensively.

Second, none of the logos of major competitors are remotely similar to either the Shaded logo or Wordless logo marks.

Having started with overlapping ovals, ASDA separated
them to deliberately avoid a "rip off"

Third (and the judgment explains the evidence for this in detail), Asda had developed their brand starting with a version of the Wordless logo: two overlapping ovals superimposed with the words “ASDA Optician”, but shied away from this version, describing it in internal documents as a “rip off”, “highly recognisable” and “the Specsavers logo”. This, the judge noted, shows that ASDA knew consumers recognised the overlapping ovals on their own as a Specsavers brand.

Fourth, he accepted evidence on behalf of Specsavers that from a distance, consumers identify the company with overlapping green ellipses, and that these would amount to genuine use of the Wordless logo (which is registered without any colour limitation and thus for all colours). see footnote

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.

He concluded with some words of caution against reading too much into this judgment:

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.

And so ends the saga. The clear-sighted decision by Specsavers to register the blank outline shape has paid off in the end. As for ASDA, perhaps whoever looked over their promotional materials in the first place should have gone to ...
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Footnote:
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.