The Court of Justice of the European Union (CJEU) recently delivered its judgement in Specsavers v Asda.
The European court’s clarification regarding ‘genuine use’ of trademarks normally used within composite logos and enhanced reputation based on use of marks in a particular colour should be welcomed by brand owners.
Genuine Use of Single Marks and Composite Marks
Asda’s advertising campaign in 2009 promoting its in-store opticians, prompted Specsavers to take legal action for trade mark infringement due to similarities with its logo. The High Court ruled that Asda’s strap line, ‘be a real spec saver at ASDA’ was an infringement yet it dismissed the claim that the Asda’s logo, two ovals similar to Specsavers’ logo, infringed Specsavers' registered trade mark.
The High Court argued the registered ‘wordless logo mark’ relied on by Specsavers which consisted of overlapping ovals without the word ‘Specsavers’ superimposed was invalid on the grounds of ‘non use’. Specsavers normally used a separately registered composite mark that included both the overlapping ovals and the superimposed ‘Specsavers’ wording.
The CJEU was asked by the Court of Appeal to clarify whether use of a complex logo comprising a figurative element and word element as a composite mark could amount to ‘genuine use’ of the figurative element alone, as registered.
The CJEU decided in light of recent decisions in Collosseum Holdings v Levis Strauss and Rintisch v Eder that device marks which are only used as part of composite marks can still be regarded as having been ‘genuinely used’ provided that they have become distinctive in themselves. Whether the mark was distinctive or not, was left for the Court of Appeal to decide.
Use of Colour in Trademarks
Not only had Asda used a remarkably similar mark to Specsavers in terms of shape, the overlapping ovals, it had also used a similar colour - the colour green. The colour similarity was of importance with regard whether Asda’s campaign amounted to unfair advantage and would lead consumers to be confused.
Complicating this aspect of the case was the fact that Specsavers had registered the relevant trademarks only in black and white. However, Specsavers always used the logo in green and it was a colour widely associated with the brand.
In deciding on the use of colour, the CJEU reiterated the principle of ‘global assessment’, taking into account all factors relevant to the circumstances of the case. The CJEU recognised colour affects the way marks are perceived and how colours are associated with brands. As a result, the CJEU declared Asda’s use of the colour green, was relevant to the assessment of confusion and unfair advantage.
One caveat the CJEU did raise however was Asda’s existing reputation and association with the colour green which may reduce the likelihood of confusion if the public interpreted the colour green as being distinctive of Asda as opposed to Specsavers.
Comment
The CJEU rulings on both the genuine use of singular elements of composite marks and on colours normally used for marks registered in black and white provide helpful clarity for brand owners. Brands should remain vigilant for breaches of their intellectual property and be pro-active in protecting their trademarks; for more information please contact James Crichton via e-mail jcrichton@rollingsons.co.uk or by telephone on 0207 611 4848.
