Last week the Court of Justice of the EU ("CJEU") gave judgment in the Specsavers v Asda litigation. This dispute concerned Asda's marketing campaign for optician services, which involved straplines
Last week the Court of Justice of the EU ("CJEU") gave judgment in the Specsavers v Asda litigation. This dispute concerned Asda's marketing campaign for optician services, which involved straplines referring to Specsavers (eg "Be a real spec saver at Asda") and the following logo:
Specsavers alleged that both the logo and straplines infringed a number of its trade mark registrations.
The English Court of Appeal had found trade mark infringement based on an unfair advantage (Article 9(1)(c) Community Trade Mark Regulation ("CTMR") but not on likelihood of confusion (Article 9(1)(b) CTMR), despite acknowledging that Asda had "lived dangerously". The Court also asked the CJEU for guidance on issues concerning genuine use and enhanced reputation based on use of marks in a particular colour.
The CJEU confirmed that genuine use of a logo mark can be established by using that mark in conjunction with a superimposed word mark, the combination of which is also a registered Community Trade Mark. The Court also confirmed the established jurisprudence that likelihood of confusion and unfair advantage have to be assessed on a global basis, taking into account all relevant factors. One of the Specsavers marks was registered only in black and white but used extensively in green, such that a significant proportion of the public associated the sign with the colour green. Accordingly, the colour in which Asda used its sign is relevant to the assessment of likelihood of confusion and unfair advantage. Also relevant to these assessments is the fact that a significant proportion of the public associate Asda with the colour green.
The reference was made before the English Courts had the benefit of the CJEU decisions in Colloseum Holdings (previous report here) and Rintisch (previous report here). However, this ruling is a logical and uncontroversial extension of those rulings. It is clear that brand owners can update their brands over time even if their trade mark registrations do not reflect the exact version of the mark as used. Regardless of whether the sign is used in conjunction with a superimposed word mark, the fundamental question is whether, as a consequence of that use, the sign serves to identify goods from a particular undertaking in the minds of the relevant class of persons. The ruling on colour also reflects how a mark can acquire a reputation through use.
Specsavers alleged that both the logo and straplines infringed a number of its trade mark registrations.
The English Court of Appeal had found trade mark infringement based on an unfair advantage (Article 9(1)(c) Community Trade Mark Regulation ("CTMR") but not on likelihood of confusion (Article 9(1)(b) CTMR), despite acknowledging that Asda had "lived dangerously". The Court also asked the CJEU for guidance on issues concerning genuine use and enhanced reputation based on use of marks in a particular colour.
The CJEU confirmed that genuine use of a logo mark can be established by using that mark in conjunction with a superimposed word mark, the combination of which is also a registered Community Trade Mark. The Court also confirmed the established jurisprudence that likelihood of confusion and unfair advantage have to be assessed on a global basis, taking into account all relevant factors. One of the Specsavers marks was registered only in black and white but used extensively in green, such that a significant proportion of the public associated the sign with the colour green. Accordingly, the colour in which Asda used its sign is relevant to the assessment of likelihood of confusion and unfair advantage. Also relevant to these assessments is the fact that a significant proportion of the public associate Asda with the colour green.
The reference was made before the English Courts had the benefit of the CJEU decisions in Colloseum Holdings (previous report here) and Rintisch (previous report here). However, this ruling is a logical and uncontroversial extension of those rulings. It is clear that brand owners can update their brands over time even if their trade mark registrations do not reflect the exact version of the mark as used. Regardless of whether the sign is used in conjunction with a superimposed word mark, the fundamental question is whether, as a consequence of that use, the sign serves to identify goods from a particular undertaking in the minds of the relevant class of persons. The ruling on colour also reflects how a mark can acquire a reputation through use.