Who: Specsavers v ASDA
Where: Court of Justice of the European Union
When: 18 July 2013
Law stated as at: 30 July 2013
The ongoing IP dispute between ASDA and Specsavers has been well covered in the legal press and www.marketinglaw.co.uk has reported both on the case in the High Court back in 2010 and the Court of Appeal judgment in 2012. The latest instalment was handed down by the Court of Justice of the European Union (“CJEU”) on 18th July this year.
For anyone new to the case, the dispute started when ASDA launched a marketing campaign for its own range of optical products featuring a double-oval logo that Specsavers felt was too similar to their own.
The issue was exacerbated by the supermarket retailer choosing to use the straplines “Be a real spec saver at ASDA” and “Spec savings at ASDA”. Specsavers accordingly launched a claim for infringement of a number of their trade marks. The overall progress of this through the courts is covered in more detail in the previous www.marketinglaw.co.uk articles.
The recent judgment of the CJEU stemmed from one part of the judgment in the High Court. European trade mark legislation gives parties the opportunity to apply to strike trade marks off the register if they are not actually being used (referencing “genuine use” as defined in Article 15(1) and Article 51(1)(A) of Council Regulation 207/2009). As a result of a counterclaim by ASDA at first instance, one of Specsavers’ Community Trade Marks which consisted of the shape of the Specsavers logo in black and white with no text (the “CTM”), was revoked for non-use.
Along with various other parts of the judgment, this issue was appealed to the Court of Appeal. However the Court of Appeal had a number of questions on how they should interpret the European trade mark legislation concerning this CTM, so referred a set of questions to the CJEU.
1. The non-use claim
The facts surrounding the non-use claim were that Specsavers had three registered Community Trade Marks: the CTM, the word mark “Specsavers” and a composite logo with the word “Specsavers” superimposed on top of the CTM. While the use of the composite logo was not contested, the CJEU had to decide whether this also was capable as counting as genuine use of the CTM under the relevant legislation.
The CJEU ruled that yes, the condition of genuine use may be fulfilled where:
a) a Community figurative trade mark is used only in conjunction with a Community word mark which is superimposed over it, and
b) the combination of those two marks is also itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.
2. Colour usage of black and white trade marks
Another question raised by the Court of Appeal to the CJEU arose because the CTM had been registered in black and white, but was primarily used in Specsavers’ corporate green colour. The CJEU was asked by the Court of Appeal to clarify whether consumer familiarity with a trade mark used in a particular colour could be relevant for assessing likelihood of confusion or unfair advantage in trade mark and passing off proceedings, notwithstanding that the trade mark was registered in black and white.
The CJEU ruled that the colour or colours which a third party uses in order to represent a sign alleged to be infringing of a Community trade mark are relevant where the Community trade mark is not registered in colour, but the proprietor has:
a) used the trade mark extensively in a particular colour or combination of colours; and
b) the trade mark has become associated in the mind of a significant portion of the public with that colour or combination of colours.
3. ASDA’s corporate colours
A further question was asked of the CJEU, which appears to have been intended to clarify the effect on issue 2, of the fact that ASDA’s own corporate colours were also green. In response, the CJEU explained that where a third party which allegedly infringes a registered trade mark with a sign:
a) is itself sufficiently associated (in the mind of a significant portion of the public) with a colour or particular combination of colours; and
b) this is also the colour which the third party uses for the representation of the allegedly infringing sign, this will also be relevant when conducting the global assessment of the likelihood of confusion and unfair advantage under the relevant legislation.
Why this matters:
The CJEU’s ruling on genuine use mirrors its judgment in Colloseum Holding AG v Levi Strauss & Co, where again the full logo and both of its component parts (the shape and the brand name) were also registered. Whether genuine use would have been demonstrated in the absence of a registered or unregistered composite logo is less clear.
The CJEU have given the Court of Appeal guidance that genuine use may be satisfied by use of a mark which is used with another mark and as part of a composite logo. However it is worth noting the “may” in the CJEU’s judgment, which would still appear to give the national court leeway to decide that on the facts, genuine use has not been established. It remains to be seen how the Court of Appeal interprets the CJEU’s judgment.
A sufficiently well-recognised colour scheme used by a party and on its trade mark will be taken into account when assessing likelihood of confusion in infringement proceedings, even if the trade mark is registered in black and white. It therefore appears that black and white trade marks may be stronger if consistently used in the same colour; particularly if it the colour is one recognised by consumers as associated with the proprietor. Finally, it is worth noting that the UK Government was keen for the CJEU to take the opposite view on points 2 and 3 (i.e. that consumer familiarity with usage in a particular colour should not be relevant when assessing likelihood of confusion in respect of a black and white trade mark) and made representations to the CJEU on these points.