The Specsavers vs Asda saga: Genuine use of trademarks

In this dynamic business world, trademark registration is an imperative. And yet, it is not enough merely to own a trademark. Trademarks need to be used to avoid any loss of rights for non-use. The issue of genuine use of the trademark in the business sphere arose before the English Court and the Court of Justice of the European Union (CJEU) in a long running dispute between Specsavers and Asda for the past five years. Specsavers registered the two logos shown below, but developed its marketing strategy by using the Shaded logo.

In October 2009, Asda launched an advertising campaign for optical products and targeted the Specsavers group by using similar logos to those of the latter. Specsavers filed an action against Asda for infringement of both the word trademark and figurative trademarks before the High Court of Justice of England and Wales. The High Court of Justice rejected the infringement argument, but held that the trademark associated with the wordless logo had lapsed due to lack of use. Specsavers appealed, upon which the Court of Appeal asked the CJUE for a preliminary ruling on the following question (Case C- 252/12): “Is the condition of genuine use of a Community word trademark satisfied when a graphic device Community trademark is used only in conjunction with a Community word trademark which is superimposed over it?” The ECJ said that the requirement of “genuine use” can be satisfied even if the Community figurative trademark is used in conjunction with a Community word trademark which is superimposed over it. However, the distinctive character of the said trademark as registered should not be altered. The matter was referred back to the English Court of Appeal. Applying the guidance provided by the CJEU, the Court considered whether the wordless trademark used without the logo being a composite part of the shaded trademark is perceived by average consumers as indicating the origin of products and services. First of all, the court was not convinced that the use of the shaded trademark with the term “Specsavers” affixed to it is a strong argument showing the genuine use of the wordless trademark. However, the assessment must be undertaken in relation to all uses made of the shaded logo and the perception of average consumers. The Appeal judge noted that the shaded trademark had been used extensively and that none of the logos used by competitors resembled the Specsavers’ logos. It was clear from the evidence adduced that Asda knew of the association made by the average consumer between the superimposed ovals and Specsavers. Moreover, it was shown that, from a distance, consumers identified the two ovals as belonging to Specsavers. This satisfied the Court that the wordless logo was genuinely used, which was registered without any colourlimitation. As a result, Specsavers kept its valid figurative trademark. It is to be noted however that the English Court sought to curtail the potential ramifications of this decision and pointed out that each case would be decided on its own facts. This precedent is not devoid of risks, since it opens the floodgates to applications for the registration of standard shapes similar to registered trademarks. To be followed.