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Specsavers International Healthcare Ltd & Ors. (Claimants / Appellants) v Asda Stores Ltd (Defendant / Respondent) Registrar of Trade Marks (Intervener)
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1 User Commentary

Melanie Davidson (In-house lawyer) 24 September 2015

Case Digest

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Whether the "wordless logo mark" registered to Specsavers was in genuine use by the company in the design of their logo, in spite of the superimposed wording, and therefore whether Asda had infringed this registered trade mark in the design of the logo for Asda Opticians.

Heard before the Lord Chief Justice of England and Wales, Lady Justice Black and Lord Justice Kitchin. 

Judgment was handed down in the case of Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd (Registrar of Trade Marks Intervening) [2014] EWCA Civ 1294 on 15 October 2014. The appeal was originally brought in October 2011, with judgment handed down as to various issues on 31 January 2012 but adjourned on other issues awaiting a preliminary ruling to the European Court of Justice (ECJ) as to the correct interpretation of Articles 9(1)(b) and (c), 15 and 51 of Council Regulation (EC) No. 207/2009/EC ("The Regulations"). The latter two Articles were relied on by Asda at trial in their argument that the "wordless logo" mark, the trade mark on which Specsavers argued they based the background of their logo i.e. the overlapping elipses, should be revoked on grounds of non-use, in an attempt to counter Specsavers allegations of trade mark infringement.

In the instant hearing Specsavers sought to appeal against an order of Mann J on 6 October 2010 sitting in the High Court ([2010] EWHC 2035 (Ch)). The order declared that certain aspects of the marketing campaign conducted by Asda, as Asda Opticians, concerning the logo in dispute here did not infringe the registered trade marks of Specsavers. He ordered the revocation of Community trade mark no. 1358589, the so-called "wordless logo" mark recognisable as two overlapping ellipses. Specsavers pursued this appeal of its own volition and at its expense, including paying the costs of the Registrar for his intervention, even once they had settled the dispute with Asda.

The worldess logo mark is registered in respect of spectacles and opticians' services, without colour limitation. It is therefore registered in respect of all colours, including the colour green associated with Specsavers. Specsavers registered multiple Community trade marks—namely 1321298 and 1321348 pertaining to the "word" mark Specsavers, 449256 and 1321348 the "shaded logo" mark, 5608385 "the unshaded logo" mark and 1358589 "the wordless logo" mark. Before the High Court Specsavers argued that the shaded logo mark, which bears resemblence to the wordless logo mark save the inclusion of the name "Specsavers", also constituted use of the wordless logo. Mann J argued that the inclusion of text superimposed on the wordless mark altered the "distinctive character of the Wordless logo mark and so the use of it could not be relied upon". 

Handing down a unanimous judgment, Lord Justice Kitchin placed much consideration on the ECJ's findings, particularly that the superimposition of the word Specsavers over the wordless logo mark amounts to genuine use of the wordless logo mark to the extent that the mark as it was registered, "namely without a part of it being hidden by the superimposed word", always refers in that form to the goods of Specsavers covered by the registration. Genuine use is achieved where a Community figurative mark is used in conjunction with a word mark superimposed over it, and the combination of these two marks is itself a registered trade mark. 

As to the question of confusion between the Specsavers logo and the design for Asda Opticians, he noted that "the perception of the marks by the average consumer plays a decisive role in the global appreciation of the likelihood of confusion". The colour in which a black and white registered mark is used, in this case the wordless logo mark, affects how it is perceived and the colour may become associated with the mark. He found that the green colour applied by Specsavers to the wordless logo mark served to identify the goods or services of Specsavers. The logo we know of has been in use by Specsavers since it became an aspect of the business in 1995. It has been displayed on their signage and promotional material, including adverts that have won awards for their striking and often funny nature. Secondly he recognised the logo was something that its major competitors had not replicated at all or in part. 

Third, Asda was well aware of its original design's similarity to Specsavers wordless logo mark. An internal Asda note described their design as "Asda version of Specsavers - riup off", the whole design process having started with a Specsavers logo. Accordingly they moved the elipses further away so that they were no longer touching. The inclusion of "ASDA Optician" would have been a "rip off", "highly recognisable" and "the Specsavers logo". Further it is reasonable to assume that Asda had an awareness of the market and the reaction of the consumer to the proposed logo. Fourth and finally, it is the overlapping elipses and not the word that makes the Specsavers logo stand out and is recognisable as Specsavers, particularly when used on signage outside their premises. This would amount to a genuine use of the wordless logo mark, registered in every colour including their shade of green.

Nevertheless he stressed that taking each case on their own facts, it is unlikely that the background of a mark will be perceived by the average consumers as an indication of origin. 

Appeal allowed.

database/2017-12-14T02:44:32.0841065Z/10094978

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