No spec saving for Asda: genuine use of a trade mark considered by Court of Appeal

In what looks set to be the final word in this long-running saga, the Court of Appeal has reversed the High Court's revocation decision against Specsavers' "Wordless logo" mark (we reviewed each stage of this litigation in our October 2010, April 2012 and November 2013 Technology & IP newsletters).¹ The Court was satisfied that the logo had been put to genuine use, despite having only been utilised as part of a composite mark. The decision is good news for rights holders who use their marks in conjunction with each other. However, the judge was at pains to emphasise that each case must be assessed on its facts. In general, it is unlikely that the background shape of a mark would, on its own, be perceived by the average consumer as an indication of origin.

The original spectacle

In 2009, supermarket giant Asda launched a campaign to revive its in-store opticians' service, which included the use of two straplines and a logo:

• "Be a real spec saver at Asda" (the first strapline); and
• "Spec saving at Asda" (the second strapline).

Specsavers brought proceedings against Asda for trade mark infringement and passing off.

Key legislation

The Community Trade Marks Regulation² states that a Community trade mark (CTM) owner may prevent third parties from using the following signs in the course of trade without consent:

• Article 9(1)(a): identical signs for identical goods or services;
• Article 9(1)(b): identical or similar signs for identical or similar services where there exists a likelihood of confusion between the signs; and
• Article 9(1)(c): identical or similar signs for dissimilar services (or similar services)³ where the earlier mark has a reputation in the Community and where use without due course takes unfair advantage of, or is detrimental to, the distinctive character of the CTM

High Court

The High Court held that the first strapline infringed Article 9(1)(c) and applied the ECJ's decision in L'Oreal -v- Bellure (which we reviewed in our November 2009 and May 2010 Intellectual Property Newsflashes),⁴ finding that the Asda logo took unfair advantage of the reputation and distinctive character of Specsavers' CTMs. However, the Court ordered that Specsavers' Wordless logo mark be revoked on the basis of non-use.

Court of Appeal

The Court of Appeal agreed with the High Court's verdict on the first strapline. It reversed the High Court's decision on the Asda logo and second strapline, finding that they too infringed Specsaver's marks. It requested guidance from the Court of Justice of the European Union (ECJ) on what constitutes use of a CTM with respect to combinations of marks and colours.

The ECJ

The ECJ found that the condition of "genuine use" under Articles 15(1) and 51(1)(a) of the Community Trade Marks Regulation⁶ may be met where a figurative CTM is used solely in conjunction with a word CTM, and where that combination of marks is itself registered as a CTM, provided that the differences between registration and use do not affect the mark's distinctive character. It went on to find that both the colour used in association with a black and white CTM, and an infringer's use of a particular colour in its regular branding, were relevant to a global assessment of the likelihood of confusion or unfair advantage.

Back at the Court of Appeal

Specsavers and Asda have settled their dispute on confidential terms. However, they agreed that Specsavers was at liberty to pursue its appeal against the order that the Wordless logo mark be revoked.

Composite mark

The Court noted that, consistent with the ECJ's ruling, "genuine use" may be satisfied "where the trade mark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is, furthermore, itself registered as a trade mark".⁷

The Court re-examined the manner in which Asda's marketing executives had been found to be "living dangerously" by mimicking Specsaver's well-known logo in its branding. In various mock-ups of Asda's own logo, it moved from a very similar version of the Specsaver's mark to a less imitative version.

Draft versions of the Asda logo

By pasting its own mark over the overlapping ellipses in the first version of its logo, Asda was utilising Specsavers' Wordless logo mark. The Court found that this raised a strong inference that Asda was well aware that the Worldless logo mark denotes Specsavers, even with its own name written across it. More damning still was the fact that Asda itself acknowledged that this version of its logo would have been a "rip off" that was "highly recognisable" as the "Specsavers' logo". This was consistent with the testimony of Specsavers' co-founder, Dame Mary Perkins, who said under cross-examination that she "looks for the shapes" when she visits towns with a Specsavers' outlet. The Court agreed that, from a distance, it is the overlapping green ellipses that stand out on the logo - not the term "Specsavers".

Genuine use

The Court therefore concluded that much of the use that Specsavers has made of the overlapping green ellipses with the term "Specsavers" also constitutes use of the Worldless logo mark - and that the latter did function as a badge of origin. Specsavers had therefore made genuine use of the Worldless logo mark.

Please click on the links below for the other articles in the December 2014 IP/IT newsletter:

• Cartier -v- BSkyB: High Court orders ISPs to block access to trade mark-infringing websites
• 1967 Ltd -v- BSkyB: High Court orders ISPs to block access to copyright-infringing music websites
• ECJ ruling in Deckmyn provides further clarity to the UK parody exception
• Revenge porn: a dish that could serve you with a jail term
• TRIPP TRAPP: seat at the table of never-ending rights for shape marks remains elusive

_Notes:

_{¹Specsavers -v- Asda [2014] EWCA Civ 1294.}

_{²Council Regulation 207/2009/EC on the Community trade mark.}

_{³L'Oreal -v- Bellure Case C-487/07 and [2010] EWCA Civ 535 confirms that the provision applies to similar goods and services.}

_{⁴Case C-487/07 and [2010] EWCA Civ 535.}

_{⁵Community trade mark no. 1358589.}

_{⁶These provisions set out the requirement to make genuine use of a CTM under the Community Trade Marks Regulation. In brief, if a mark has not been put to genuine use within a period of five years following registration, or if such use has been suspended for more than five years without a proper reason for non-use, that mark is vulnerable to revocation. Genuine use includes use in a form differing in elements that do not alter the distinctive character of the mark as registered.}

_{⁷Para 26 [2014] EWCA Civ 1294.}