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Specsavers eyes up win in revocation battle

Amy Reynolds
04/11/2014
Specsavers has successfully defended against revocation of one of its wordless logo trade marks by relying on its use of a different logo, an unusual set of facts and some persuasive evidence.Lord Specsavers has successfully defended against revocation of one of its wordless logo trade marks by relying on its use of a different logo, an unusual set of facts and some persuasive evidence.

Lord Justice Kitchin in the Court of Appeal (Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2014] EWCA Civ 1294) recently put an end to the ongoing dispute between two British heavyweights – Specsavers and Asda.

The parties have been battling for a number of years before different courts over the decision by Asda to adopt a particular logo for its Asda Opticians brand. Asda's logo featured two ellipses and was considered by Specsavers to be too close to its own logo:

asda

Although the parties eventually reached a confidential commercial settlement, one of the settlement terms was that Specsavers could appeal the order for its registration for the following "Wordless Logo" trade mark to be revoked:

Specs1.pdf

To defend the revocation claim, Specsavers did not rely on the Wordless Logo, but instead relied on its use of the following "Specsavers Logo":

spec2

The Court of Appeal referred several questions to the Court of Justice, which related to whether use of the Specsavers Logo could amount to genuine use of the Wordless Logo for the purposes of defending a revocation claim. The Court of Justice made it clear that the use of the Specsavers Logo could be genuine use of the Wordless Logo, even though the Specsavers Logo, the Wordless Logo and the word SPECSAVERS were each registered trade marks in their own right.

The matter was referred back to the Court of Appeal, and Lord Justice Kitchin decided that in this case the use of the Specsavers Logo did amount to genuine use of the Wordless Logo, for the following reasons:

  • There was substantial evidence of use of the Specsavers Logo;


 

  • From a distance, when viewing the Specsavers Logo, the word SPECSAVERS does not stand out and it is the green ellipses which catch the eye;


 

  • It is permissible to take into account that a mark has always been used in a particular colour (in this case green) and how this affects how the mark is perceived by the average consumer. In this case, Specsavers' evidence showed that the average consumer perceives the overlapping green ellipses as indicative of Specsavers' goods and services;


 

  • No major competitors used a logo which was remotely similar to the Wordless Logo; and


 

  • The evidence of the development of the Asda logo (which also featured two ellipses with the words ASDA Optician) included internal documents which referred to these initial logos being "like Specsavers", "Specsavers rip-off" and "highly recognisable". This suggested that Asda's design process started with the Wordless Logo and moved to what was considered a safe distance from it, which strongly inferred that Asda employees believed that the Wordless Logo denotes Specsavers, even with the words ASDA Optician written across the ellipses.


Comment

Whilst this is a significant victory for Specsavers, it is important to note that each case is decided on its own facts, and it will not always be the case that the background of a trade mark will be perceived by the public (and/or be capable of registration) as a trade mark in its own right. The Registrar was invited to intervene (and argued for revocation in this case), and Lord Justice Kitchin made it clear that the decision did not open the floodgates for applicants to routinely secure trade mark registrations of relatively common shapes or outlines.

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