Seeing through green-tinted spectacles
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Seeing through green-tinted spectacles
You will need your eyes checking if you have missed the recent controversy between Specsavers and Asda. In a case which has gone all the way to the top, the Court of Justice of the European Union has just handed down its judgment on the trade mark litigation between the two companies.
In its 2009 marketing campaign to promote its in store opticians, Asda chose to use the slogans “be a real spec saver at Asda” and “spec savings at Asda” together with a green double ellipse logo.
In the High Court, the strap lines were held to infringe Specsavers’ various registered trade marks. However, the court dismissed the claim regarding the logo in its entirety due to the fact that Specsavers’ registered trade mark featured the ellipse on its own, without the words SPECAVERS superimposed. The Court held that the mark was invalid on the grounds of non-use because in reality, it always feature the SPECSAVERS work superimposed.
On appeal to the Court of Appeal, the case was largely decided in Specsavers’ favour and all elements of the Asda marketing were held to infringe by taking unfair advantage of Specsavers’ reputation. However, the Court of Appeal were unable to determine the issue regarding the wordless logo mark as it struggled to apply the test of genuine use when it had never been used on its own.
The CJEU was therefore asked to clarify whether the use of a complex logo comprising a figurative element and a word element could amount to ‘genuine use’ of the figurative element alone, as registered. Applying its previous decisions in Colloseum Holding and Rintisch the court held that a composite logo COULD be considered a ‘genuine use’ of the underlying wordless mark, if consumers perceived the wordless logo as being distinctive of Specsavers. This is an interesting decision and it remains to be seen how strictly national courts will apply this ruling in considering the validity of registered marks which, despite being well known parts of composite logos, have never been used in their registered form.