'Background' trade marks may be valid even if never used as registered , UK court rules

The Court of Appeal made the ruling in overturning a previous judgment in which a Community trade mark owned by Specsavers had been revoked. Specsavers' mark took the form of a wordless any-colour logo that had an overlapping double elliptical shape***.

The Court said there had been 'genuine use' of the mark by Specsavers despite the fact the company had never used it without it being part of a composite sign that included the word 'Specsavers'.

Intellectual property law specialist Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said: "Although the Court of Appeal sought to mitigate the wider impact of the decision, it does, however, mark another move away from the trade mark register being the definitive record of what is protected."

"Together with the other question referred to the CJEU in this case regarding whether the colour in which a mark has been used, but not registered, should be taken into account when considering questions of infringement, this decision further demonstrates that, for businesses and lawyers, the register is now just the starting point," Mitton said.

Specsavers' wordless logo mark was revoked after it was challenged for non-use by Asda as part of a wider dispute. The parties settled that dispute in 2012 but Specsavers chose to challenge the decision revoking its trade mark.

Under the EU's Community Trade Mark Regulation, Community trade marks which are not put to 'genuine use' "in connection with the goods or services in respect of which [they] are registered" during a five year period can be revoked.

Community trade marks can be considered to have been used if they are used "in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered", according to the Regulation.

Asda had successfully argued that the Specsavers wordless logo mark had not been put into genuine use as it had only ever been used in conjunction with the 'Specsavers' word and that the 'distinctive character' of the wordless logo mark used in this way had been altered as a result.

The Court of Appeal described the 'Specsavers' word on the wordless logo as "distinctive" and said it appeared "in prominent letters in a contrasting colour across the centre of the mark".

However, it said that EU guidance on the point meant that it had to consider the overall use of Specsavers' shaded logo mark and the average consumers' perception of it before determining whether the distinctive character of the wordless logo mark was altered by the inclusion of the text on top of it.

In making its assessment, the Court of Appeal reviewed the use Specsavers had made of its composite shaded mark, which included the underlying wordless logo mark and the word 'Specsavers', since the company began operating. It said it considered there to have been "extensive use" made by Specsavers of its composite sign across its business since the mid-1990s. It also said there had been "very extensive use" made by Specsavers of its composite sign across its advertising and marketing materials.

The Court gave weight to the fact that the composite sign used by Specsavers was not "remotely similar" to any signs used by its competitors and it also took into account the way Asda had considered Specsavers' logo when it developed its own marketing campaign for its competing opticians service.

It further considered evidence given by one of Specsavers' founders, Dame Mary Perkins, about the views she had heard taxi drivers express to her about how they recognise Specsavers outlets. Dame Mary said taxi drivers had told her that they looked for the "overlapping green elipses" when looking out for Specsavers' outlets.

The Court ruled, on the basis of those factors, that Specsavers' wordless logo mark had been put into genuine use by the company and reversed the previous revocation of the mark. The Court was, however, very keen to point out that this case was unusual and turned on the particular evidence.

"I have come to the conclusion that, in the rather unusual circumstances of this case and notwithstanding my initial impression to the contrary, Specsavers have established that much of the use they have made of the shaded logo mark including, in particular, its use on signage, does also constitute use of the wordless logo mark, for the evidence in this case shows that it has been such that the wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers," Lord Justice Kitchin said in the Court's judgment.

"In short, much of that use has been such that the differences between the shaded logo mark and the wordless logo mark have not changed the distinctive character of the wordless logo mark; and the wordless logo mark has itself been seen as a trade mark and not simply as background. It follows that Specsavers have established that they have made genuine use of the wordless logo mark," the judge said.

*** Images of the marks in question are contained in the judgment