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Use of a composite trade mark comprising a word element and a figurative (logo) element can amount to “genuine use” of a registered trade mark for the figurative element alone even when the word is superimposed over the logo rather than appearing side by side, provided that the differences between the form in which the trade mark is used and that in which it was registered does not change the distinctive character of the registered trade mark. Thus there may be “genuine use” of a figurative mark which is independently distinctive, even if it is only used with a word element.
The CJEU has also ruled that where a mark is registered in black and white but used extensively by the proprietor in its own distinctive colour(s) (and the colour is associated with the brand by the public), the colour(s) which a third party uses for an allegedly infringing sign can be relevant in assessing likelihood of confusion and unfair advantage for the purposes of trade mark infringement.
If the alleged infringer uses the mark in its own corporate colours that is also a factor which may be taken into account.
The Court of Justice for the European Union (“CJEU”) has ruled on the questions referred to it by the Court of Appeal in the long running and ongoing dispute between Specsavers and ASDA.
Back in 2009, ASDA launched an advertising campaign, using the logo shown below:
Specsavers alleged infringement of its Community registered trade marks for the word SPECSAVERS as well as the three marks shown below:
(the “Specsavers Trade Marks”). The CJEU referred to the last of these as the “Wordless Logo Mark”.
In the context of trade mark infringement proceedings, the High Court revoked the Wordless Logo Mark shown above on the grounds of non-use under Articles 15(1) and 51(1)(a) of the CTMR. This provides that a trade mark can be revoked if it is not put to genuine use for a continuous period of 5 years after registration without proper reason.
The CTMR specifies that “use” of a trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, can constitute genuine use.
Specsavers appealed the decision and the Court of Appeal referred various questions to the CJEU regarding the interpretation of Articles 15(1) and 51(1)(a) of the CTMR. Specsavers had long been trading using their logo in green, which incorporated the Wordless Logo Mark, with the SPECSAVERS word superimposed over it. The combination of the two (ie the Wordless Logo Mark and the SPECSAVERS name) was also the subject of separate trade mark registrations (ie the first two marks shown above).
The Court of Appeal asked the CJEU if, where a trader has separate registrations of Community trade marks for a figurative device mark and a word mark; and uses the two together, that amounts to use of the figurative device mark. The Court of Appeal also asked whether it made a difference if the word mark was superimposed over the figurative device; whether the combined mark was itself registered as a CTM; and about the relevance of the perception of the marks by the average consumer.
In the meantime, the CJEU had been asked a similar question in the context of the validity of Levi’s trade mark registration for its red tab (which was used only with the word Levi’s superimposed on it).
It is of note that the superimposing of the words Specsavers over the Wordless Logo Mark changed the form in which the Wordless Logo Mark was registered because certain parts of the Wordless Logo Mark were hidden by the superimposition of the mark; it was not a mere juxtaposition.
Expanding upon its decision in the Levi’s case. The CJEU ruled that the condition of “genuine use” could be fulfilled where a Community figurative device mark is used only in conjunction with a Community word mark and where the combination of the two is itself registered as a separate Community trade mark, to the extent that the differences between the form in which the mark is used does not alter the distinctive character of the registered mark. This is the case whether the word element is superimposed on the figurative element or appears side by side.
The Court of Appeal also referred questions to the CJEU regarding Specsavers and ASDA’s use of their respective logos in the colour green. Specsavers had used their logo consistently in the colour green such that consumers associated that colour with the Specsavers Trade Marks. The CJEU was asked to rule on whether or not a defendant’s use of a similar colour scheme would be relevant to the global assessment of the likelihood of confusion or unfair advantage for the purposes of assessing trade mark infringement. In the present case, the Court of Appeal also noted that ASDA’s own branding heavily featured the colour green and so a further question was asked whether it was relevant that the defendant is itself associated in the minds of the public with a similar colour scheme which it is using for the sign complained of.
It is well known that likelihood of confusion must be considered globally taking into account all relevant factors. Marks with a highly distinctive character either inherently or through use enjoy greater protection than marks with less distinctive character. The CJEU considered that at the very least where there is a trade mark which is registered in black and white, the colour or combination of colours in which the trade mark is later used affects how the average consumer of the goods at issue perceives it, and use of those colours in a similar mark by a third party is therefore liable to increase the likelihood of confusion.
It would not be logical to ignore the fact that a third party has used colours associated with the trade mark proprietor simply because the proprietor’s trade mark was registered in black and white. Similarly the adoption of the trade mark proprietor’s distinctive colours by an alleged infringer is a factor considering whether unfair advantage has been taken of the distinctive character or reputation of the mark.
However, the fact that a defendant making use of the allegedly infringing sign is itself associated with the colour could also influence the public’s perception of the signs at issue and is a factor to be taken into account. In the present case the fact that Asda is itself associated with the colour green which it used in the allegedly infringing marks could result in a reduced likelihood of confusion and be relevant to whether the use of the mark is with “due cause” for the purposes of infringement under Article 9(1)(b).
For more information please contact Mary Bagnall, Partner
T: +44 (0)20 7203 5081