European Court to clarify use issues with word/logo combination Marks in Specsavers infringement case

In an important development which will have ramifications for any trade mark proprietors who own separate logo and word mark registrations but use the word and logo together, the UK Court of Appeal referred certain questions to the Court of Justice of the EU (CJEU) in a decision involving the infringement of Specsavers trade marks by Asda.

In the appeal Specsavers succeeded in its attempt to overturn a decision of the UK High Court, ruling that Asda had not infringed the overlapping oval logos and SPECSAVERS trade marks through its use of ‘Be a spec saver with Asda’ and ‘Asda Opticians’ in adjoining oval shapes.

The Court of Appeal found that, taking into consideration Asda’s overall marketing campaign, Asda was ‘seeking to use the power of attraction of the ‘Specsavers’ mark and then to build on it. Asda was ‘standing on the shoulders’ of Specsavers.’ Therefore, the Court of Appeal ruled that Asda had infringed the word mark of Specsavers and also the Specsavers oval logo containing the word ‘Specsavers’ on the grounds that it had used the marks without due cause and had taken unfair advantage of the reputation of Specsavers.

The questions referred to the CJEU seek to determine if use in commerce of a logo and a word mark together, even when registered separately in their own right, would support genuine use of the logo mark alone. The questions also seek to establish whether it makes any difference if the word mark is superimposed over the logo mark and whether the consumer would actually perceive the word mark and logo mark as being separate signs.

The answers to these questions relate back to the issues in the 2005 case concerning the attempt by Nestlé to register ‘HAVE A BREAK’ when the use of that slogan had always been in conjunction with ‘…HAVE A KITKAT.’ In that case, the CJEU ruled that the mark in respect of which registration was sought ‘need not necessarily have been used independently.’

From this reasoning, the Court of Appeal in the Specsavers case considered that it was ‘at least arguable’ that use of a component part of a mark as part of another trade mark may also support genuine use of that component part.

As many businesses use word marks in combination with logos and often have registered protection for both word and logo, the answers to the questions referred to the CJEU in this Specsavers case will be watched by Avidity IP with interest and reported in our publications when developments arise.