The Court of Justice of the European Union (CJEU) recently passed a ruling on the Specsavers vs. Asda case.

The conflict started in October 2009 when Asda launched an advertising campaign for spectacles which targeted the Specsavers’ group. Asda used the slogans, ‘Be a real spec saver at Asda’ and ‘Spec savings at ASDA’, along with logos reminiscent of Specsavers’ logos:

Specsavers sued Asda for infringement of their Community trade mark registrations. Specsavers’ registrations included SPECSAVERS, the word mark, along with the following marks registered in no particular colour:

In October 2010, the high court of England & Wales held that Asda had not infringed Specsavers’ registrations and also revoked their wordless shaded mark for non-use.

Specsavers appealed this decision, and the Court of Appeal held Specsavers entitled to prevent Asda from using the above mentioned slogans as well as the logo Asda had used in their advertising campaign.

To enable the Court of Appeal to make a ruling on the wordless logo aspect, the following questions were sent to the CJEU for a preliminary ruling; the CJEU’s comments are indicated below.

Question 1:

‘Where a trader has separate registrations of Community trade marks for
(a) a graphic device mark
(b) a word mark
and uses the two together, is such use capable of amounting to use of the [figurative] mark for the purposes of Articles 15 and 51 of Regulation [No 207/2009]? If yes, how is the question of use of the graphic mark to be assessed?’

Question 2:

‘Does it make a difference if:
(a) the word mark is superimposed over the [figurative element]?
(b) the trader also has the combined mark comprising [the figurative element] and [the] word mark registered as a Community trade mark?’

Question 3:

‘Does the answer to [the first and second questions] depend upon whether the graphic device and the words are perceived by the average consumer as [on the one hand] being separate signs; or [on the other hand] each having an independent distinctive role? If so, how?’

The CJEU responded by saying that ‘genuine use’ is fulfilled where a Community word mark is superimposed on a Community figurative mark, and the combination of marks is also registered as a Community trade mark, but only to the extent that the differences between the forms in which the mark is used and registered do not change the distinctive character of the registered mark.

Question 4:

‘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 [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of [either the] likelihood of confusion under Article 9(1)(b) [of Regulation No 207/2009], or unfair advantage under Article 9(1)(c) of[that regulation]? If so, how?’

Question 5:

‘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?’

Article 9 refers to the rights conferred by a Community trade mark, that it can be used to prevent third parties from using a mark which is identical/similar to the registered mark in appearance and used in relation to similar goods/services, such that use of the mark is likely to cause confusion in the eye of the public [article 9(1)(b)], and such that use of the mark, where the registered mark has a reputation in the Community, could be detrimental to the registered mark’s reputation [article 9(1)(c)].

The CJEU ruled on the interpretation of these sections: where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour such that a significant proportion of the public would associate the mark and colour, the colour is relevant for the purposes of ruling on similarity of the marks. Specsavers have used the following mark extensively:

However, the CJEU also ruled that if the third party using the mark alleged to infringe the registered mark, also have a colour associated with them, and that a significant proportion of the public would recognise this, that this is also relevant for the purposes of ruling on similarity of the marks. Asda have used the following mark extensively:

Now back to the Board of Appeal to pass a judgement. Any retailers should heed this warning and take care when devising their advertising campaigns. This ruling also emphasises the importance of registering as many aspects of a mark as possible. If you are interested in seeking registered trade mark protection for your brand, please contact us.