The CJEU Rules On Non-use And Relevance Of Use Of Colour In Trade-marks

The Court of Justice of the European Union (CJEU) has recently delivered its decision in Specsavers v Asda, a trade-mark infringement dispute dating from 2009. Specsavers owns registered Community trade-marks for the word SPECSAVERS and also for a number of logos comprising overlapping ovals. Two of the logo marks incorporate the word ‘Specsavers’ (one of which was called the ‘shaded logo’, see Figure 1) whereas the third, described in the case the ‘wordless logo’, does not (see Figure 2). The logo marks are registered in black and white but, in practice, Specsavers uses them in a particular shade of mid to dark green.

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Specsavers initiated trade-mark infringement proceedings against Asda when Asda launched a new marketing campaign, which included a logo similar to Specsavers’ (see Figure 3). The English High Court initially found that Asda had not infringed Specsavers’ trade-marks and revoked Specsavers’ plain logo mark for non-use. On appeal, however, to the English Court of Appeal, this decision was overturned, with a finding that Asda’s use did infringe Specsavers’ rights. Further, the Court of Appeal referred a number of questions to the CJEU, and in this decision the CJEU has provided clarifications to three key points.

First, the CJEU had to consider whether use of the shaded logo marks can constitute use of the wordless logo mark. The CJEU noted, “the superimposition of the word sign ‘Specsavers’ over the wordless logo changes the form in which that trade-mark was registered, in so far as it is not a mere juxtaposition, since certain parts of the ‘wordless logo’ are thereby hidden by the word sign”. However, such use could still maintain the mark if the distinctive character of the ‘wordless logo’ was not thereby altered. Following its earlier case law, the CJEU decided that the use of the ‘shaded logo’ (i.e. the ‘wordless logo’ with the word Specsavers superimposed on it) could amount to genuine use of the ‘wordless logo’ to the extent that that mark, in its form as registered (i.e. without part of it being hidden by the word ‘Specsavers’) always referred to goods of the Specsavers group. The CJEU left this issue for the English Court of Appeal to determine.

Second, the CJEU dealt with the question of whether the enhanced reputation of the device in the colour green, which the Specsavers group has always used to represent its wordless logo mark, can be taken into account when considering its use, despite the fact that that trade-mark was registered in black and white. This ruling clarifies that extensive use of a trade-mark in respect of a particular colour renders that colour relevant in the global assessment of the likelihood of confusion, even if the mark is only registered in black and white, provided that a significant portion of the public associate the mark with that colour.

Lastly, if the party using a potentially infringing sign is itself associated with a particular colour, then that colour is also relevant for the purposes of establishing the likelihood of confusion, again provided that a significant portion of the public associate the mark with that colour. However, the CJEU left for the English Court of Appeal to determine the question of the extent to which the relevant public perceives the colour green of those signs as Asda’s versus Specsavers’.

Summary by: Sumaiya Sharmeen

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