History

Specsavers recently successfully appealed a UK High Court decision to revoke, on the basis of non-use, a Community-registered figurative trade mark (see the Figurative Mark below).  The decision follows the original action taken by Specsavers against Asda for trade mark infringement.  Specsavers had claimed that an Asda Stores’ trade mark (see below) for its home-brand opticians logo and related marketing campaign, had infringed Specsavers’ trade marks.

The High Court examined three Community trade marks (CTMs) registered to Specsavers.

Appeal and ECJ Reference

The Court of Appeal asked the European Court of Justice (ECJ) whether use of the Figurative Mark only as part of the Logo Mark could amount to genuine use of the Figurative Mark. The ECJ ruled that it could. Following this reference, the Court of Appeal had to decide whether the revocation decision should be upheld on the basis that the Figurative Mark was only used as part of the Logo Mark.

Court of Appeal Decision

The Court of Appeal held, based on strong evidence, that use of the Figurative Mark as part of the Logo Mark was sufficient to indicate the origin of Specsavers’ goods and services to the average consumer. The evidence showed that none of Specsavers’ competitors used a mark similar to the Figurative Mark and that the green overlapping ovals was the image that consumers were drawn to as opposed to the SPECSAVERS word mark. In essence, it did not matter that use of the Figurative Mark differed to its registration (in black) because Specsavers’ genuine use of the Logo Mark amounted to genuine use of the Figurative Mark.

The Court of Appeal cautioned that each case must be decided on its own facts and that this decision would not make way for more claims being made regarding outline marks because this was an “unusual” case distinguished by strong evidence.

Comment

In this case Specsavers only managed to prevent one of its CTMs from being revoked on the basis of strong evidence.  It is important to take note of the Court of Appeal’s caution that this would not be the case for all outline marks.  EU trade mark case law and OHIM and national office communications are constantly refining the scope of protection afforded to marks.  This Court of Appeal decision (as well as the IP Translator case and the recent OHIM and national office communications on black and white marks) demonstrate to brand owners the importance and value of conducting periodic trade mark portfolio audits to ensure that portfolios of registrations accurately cover marks actually in use.  Failure to do so can result in gaps in protection.

Contributed by Brian McElligott.