Specsavers International Healthcare Ltd & Ors v ASDA Stores Ltd & Anor

Specsavers International Healthcare Ltd & Ors v ASDA Stores Ltd & Anor

Much of the use made by Specsavers of the Shaded logo mark, particularly on signage, constitutes genuine use of the Wordless logo mark because the evidence shows that the Wordless logo mark serves to identify the goods and services of Specsavers and is perceived by the average consumer as indicative of origin. The differences between the Shaded logo mark and the Wordless logo mark do not change the distinctive character of the Wordless logo mark.

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 / Judgment on Appeal After Reference to Court of Justice of the European Union
Outcome
Appeal allowed
Legal Topics
Genuine Use of Trademarks, Revocation for Non Use, Distinctive Character, Composite Marks, Colour Association in Trademarks
Intellectual Property Trademark Law Genuine Use of Trademarks Revocation for Non Use Distinctive Character Composite Marks Colour Association in Trademarks

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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 / Judgment on Appeal After Reference to Court of Justice of the European Union

Legal Issues

  1. 1 Whether use of a composite mark (Shaded logo) constitutes genuine use of the Wordless logo mark under Articles 15 and 51 of Council Regulation (EC) No 207/2009/EC
  2. 2 Whether differences between the form used and the form registered alter the distinctive character of the mark
  3. 3 Whether colour association is relevant in the global assessment of likelihood of confusion or unfair advantage

Ratio Decidendi

Much of the use made by Specsavers of the Shaded logo mark, particularly on signage, constitutes genuine use of the Wordless logo mark because the evidence shows that the Wordless logo mark serves to identify the goods and services of Specsavers and is perceived by the average consumer as indicative of origin. The differences between the Shaded logo mark and the Wordless logo mark do not change the distinctive character of the Wordless logo mark.

Court Disposition

Appeal allowed

Orders

  • Revocation of the Wordless logo mark is set aside; Specsavers have established genuine use of the mark.
  • Specsavers to pay Registrar's costs of intervention.