Specsavers International Healthcare Ltd & Ors v ASDA Stores Ltd & Anor [2014] EWCA Civ 1294 (15 October 2014)

Specsavers International Healthcare Ltd & Ors v ASDA Stores Ltd & Anor [2014] EWCA Civ 1294 (15 October 2014)

In the specific circumstances, substantial and consistent use of the Shaded logo mark by Specsavers, together with evidence that the average consumer perceives the overlapping ovals (Wordless logo mark) as indicative of origin, means that use of the Shaded logo mark constitutes genuine use of the Wordless logo mark. The differences between the marks do not alter the distinctive character of the registered Wordless logo mark. Therefore, revocation for non-use is not justified.

Citation
[2014] EWCA Civ 1294
Parties
Claimant / Appellant: Specsavers International Healthcare Ltd; Claimant / Appellant: Specsavers BV; Claimant / Appellant: Specsavers Optical Group Ltd; Claimant / Appellant: Specsavers Optical Superstores Ltd; Defendant / Respondent: Asda Stores Ltd; Intervener: Registrar of Trade Marks
Jurisdiction
England and Wales
Judgment Date
15 October 2014
Procedural Posture
Appeal / Court of Appeal Judgment Following Reference to CJEU and Settlement of Main Dispute; Only Revocation of Wordless Logo Mark at Issue
Outcome
Appeal allowed
Legal Topics
Genuine Use of Trade Marks, Revocation for Non Use, Distinctive Character, Composite Marks, Colour and Trade Mark Perception
Intellectual Property Trade Marks Genuine Use of Trade Marks Revocation for Non Use Distinctive Character Composite Marks Colour and Trade Mark Perception

Case Brief

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Parties

Specsavers International Healthcare Ltd

Claimant / Appellant

Specsavers BV

Claimant / Appellant

Specsavers Optical Group Ltd

Claimant / Appellant

Specsavers Optical Superstores Ltd

Claimant / Appellant

Asda Stores Ltd

Defendant / Respondent

Registrar of Trade Marks

Intervener

Procedural Posture

Appeal / Court of Appeal Judgment Following Reference to CJEU and Settlement of Main Dispute; Only Revocation of Wordless Logo Mark at Issue

Legal Issues

  1. 1 Whether use of a composite mark (Shaded logo) constitutes genuine use of the registered Wordless logo mark under Articles 15 and 51 of Regulation 207/2009/EC
  2. 2 Whether the differences between the form in which the mark has been used and that in which it is registered alter the distinctive character of the registered mark
  3. 3 Whether the perception of the average consumer supports genuine use of the Wordless logo mark

Ratio Decidendi

In the specific circumstances, substantial and consistent use of the Shaded logo mark by Specsavers, together with evidence that the average consumer perceives the overlapping ovals (Wordless logo mark) as indicative of origin, means that use of the Shaded logo mark constitutes genuine use of the Wordless logo mark. The differences between the marks do not alter the distinctive character of the registered Wordless logo mark. Therefore, revocation for non-use is not justified.

Court Disposition

Appeal allowed

Orders

  • Revocation of the Wordless logo mark set aside; mark to remain registered
  • Specsavers to pay Registrar's costs of intervention