Use of a Trade Mark: Specsavers v ASDA

In Community Trade Marks: Specsavers v ASDA 7 Feb 2012 NIPC Law I analysed the litigation that had taken place between two well known retailers in which the Court of Appeal considered how far an aggressive marketing campaign can go without infringing trade mark law. As I said in my case note Specsavers International Healthcare Ltd and others ("Specsavers") had brought an action for trade mark infringement and passing off against the supermarket chain Asda Stores Ltd. ("ASDA") for using the marketing materials that I identified in my note and Asda counterclaimed for revocation of Community trade mark 1358589 depicted above ("the wordless mark") for non-use.

History of the Litigation
The action and counterclaim came on for trial before Mr Justice Mann who found that the strapline "Be a real spec saver at ASDA" infringed the word mark under art 9 (1) (c) of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009 of 26 Feb 2009 on the Community trade mark) but otherwise dismissed the claim. He also revoked the wordless logo mark for non-use. Both sides appealed to the Court of Appeal (Lord Justice Kitchin, Sir John Thomas, the President of the Queen's Bench Division and Lady Justice Black) which allowed the appeal on some issues but not on others and dismissed Asda's cross-appeal.  The Court of Appeal felt unable to make a decision on the revocation of the wordless trade mark or whether it had been infringed without the guidance of the Court of Justice of the European Union ("the CJEU").

Accordingly, the Court of Appeal referred the following questions to the CJEU:

"1. Where a trader has separate registrations of Community trade marks for
(a) a graphic device mark
(b) a word mark
and uses the two together, is such use capable of amounting to use of the [figurative] mark for the purposes of Articles 15 and 51 of Regulation [No 207/2009]? If yes, how is the question of use of the graphic mark to be assessed?

2. Does it make a difference if:
(a) the word mark is superimposed over the [figurative element]?
(b) the trader also has the combined mark comprising [the figurative element] and [the] word mark registered as a Community trade mark?

3. Does the answer to [the first and second questions] depend upon whether the graphic device and the words are perceived by the average consumer as [on the one hand] being separate signs; or [on the other hand] each having an independent distinctive role? If so, how?

4. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of [either the] likelihood of confusion under Article 9(1)(b) [of Regulation No 207/2009], or unfair advantage under Article 9(1)(c) of[that regulation]? If so, how?

5. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?"

The CJEU considered those questions in  C-252/12 Specsavers Optical Superstores Ltd and Others v Asda Stores Ltd [2013] WLR(D) 287, ECLI: EU: C:2013:497, [2013] Bus LR 1277, EU: C: 2013:497, [2013] EUECJ C-252/12 and gave the following answers:

"1. Article 15 (1) and Article 51(1) (a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, 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. Article 9 (1) (b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.
3. Article 9 (1) (b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of that provision."

ASDA and Specsavers settled their differences as far as they could but the appeal against the revocation of the wordless mark remained. As ASDA no longer had an interest in that appeal the Court of Appeal invited the Registrar of Trade Marks to intervene on the public's behalf.  The Registrar's counsel recognized that her client's role was to protect the public interest by intervening to the extent necessary to prevent invalid trade marks being restored to the register and assisted the Court by rehearsing the counter-arguments to Specsavers' appeal, while at the same time maintaining a balanced view consistent with the Registrar's position.

The Issue
The question before the Court in Specsavers International Healthcare Ltd and Others v Asda Stores Ltd (Rev 1) [2014] EWCA Civ 1294 (15 Oct 2014) was whether the combination of the wordless mark with Specsavers word mark as in the following example ("the Shaded logo mark") constituted "use" of the wordless mark within the meaning of art 15 (1) (a) of the Community trade mark regulation.

The Judgment

After analysing the CJEU's judgment Lord Justice Kitchin summarized the Court of Appeals task as follows:

"in my judgment it follows from all of the foregoing that the national court is required to consider the use which has been made and to ask itself whether the differences between the form in which the mark has been used and that in which it is registered do not change the distinctive character of the mark as registered. In carrying out that exercise the court may ask whether the use relied upon is such that the trade mark as registered (here the Wordless logo mark) serves to identify the goods or services as those of a particular undertaking (here the Specsavers group). Put another way, if the mark as registered (here the Wordless logo mark) is used only as part of a composite mark (here the Shaded logo mark), the use must be such that the mark as registered is itself perceived as indicative of the origin of the goods or services. Moreover, it is permissible to take into consideration that the mark has always been used in a particular colour in so far as this affects how the mark is perceived by the average consumer."

His Lordship did not consider Specsavers' use of the Shaded logo mark in the above example as "a very promising basis for an argument" that they had used the wordless mark since the word Specsavers was distinctive and appeared in prominent letters in a contrasting colour across the centre of the mark. However the CJEU had directed that consideration must be given to all of the use that has been made of the Shaded logo mark, and to the perception of the average consumer and in the particular circumstances of this case there was, perhaps unusually, powerful evidence of both.  First, Specsavers had made very substantial use indeed of the Shaded logo mark over many years. Secondly, none of Specsavers' major competitors had a logo which was remotely similar to the Shaded logo mark or the wordless mark. Thirdly, the way in which ASDA developed its own competing logo while not confusing raised the inference that the public identified Specsavers by reference to the wordless mark. Fourthly, that was supported by the testimony of Dame Mary Perkins

"that, when she visits cities and towns where Specsavers have an outlet, the first thing she does is "look for the shapes" or, in other words, the Shaded logo mark. She also explained that she routinely asks taxi drivers how they recognise a Specsavers outlet, and they commonly tell her, in words of their own, that they look out for the overlapping green elipses."

In a conclusion with which Sir John Thomas (now Chief Justice of England and Wales) and Lady Black agreed, Lord Justice Kitchin said at paragraph [34]:

"Drawing the threads together, I have come to the conclusion that, in the rather unusual circumstances of this case and notwithstanding my initial impression to the contrary, Specsavers have established that much of the use they have made of the Shaded logo mark including, in particular, its use on signage, does also constitute use of the Wordless logo mark, for the evidence in this case shows that it has been such that the Wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the Wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers. In short, much of that use has been such that the differences between the Shaded logo mark and the Wordless logo mark have not changed the distinctive character of the Wordless logo mark; and the Wordless logo mark has itself been seen as a trade mark and not simply as background. It follows that Specsavers have established that they have made genuine use of the Wordless logo mark."

Comment

At paragraph [37] Lord Justice Kitchin said that the Registrar had invited the Court of Appeal to make it clear that each case must be determined on its own facts. He had expressed a concern that were the Court of Appeal to allow the appeal, the Registry might be faced with many applications to register relatively commonplace outline shapes of logo marks. The Court was entirely content to emphasize that each and every case must be decided on its own facts and in the light of all the relevant circumstances. Indeed, Lord Justice Kitchin went further and said that, in general, it was unlikely that the background to a mark would be perceived by the average consumer as an indication of origin. However, this was an unusual case and Specsavers were supported in their appeal by what his Lordship consider to be convincing evidence.

This is an important case and one that is likely to be referred to frequently in future. Despite the cold water liberally poured by the Lord Justice Kitchin on behalf of the Court in paragraph [37] of his judgment I should not be surprised by a significant increase in the number of device mark applications on the strength of this case and the decision of the CJEU. Should anyone wish to discuss it with me or trade marks law generally, he or she should not hesitate to call me on 020 7404 5252 during normal office hours. I can also be reached through my contact form and you can tweet me, write on my wall or contact me through Linkedin or Xing.