Lise Charles

In a decision that will be welcomed by brand owners, the Court of Justice of the European Union (ECJ) has held that colour is relevant to the global assessment of the likelihood of confusion and unfair advantage.

In Specsavers International Healthcare v Asda Stores Ltd (Case C-252/12), the ECJ was called upon to rule on the notion of ‘genuine use’ of a trademark - in particular, the case involved the combined use of figurative and word marks registered separately. The ECJ was also asked to consider situations where a trademark was registered without claiming a colour, but was used with a particular colour to the point of creating an association in the mind of a section of the public between that colour and the mark.

The full background to the dispute is available here and here. In short, Specsavers claimed that Asda's marketing campaign for its in-store opticians, which used a logo consisting of two ovals and the words ‘Asda Opticians’, and posters bearing the straplines 'Be a real spec saver at Asda' and 'Spec savings at Asda', was likely to cause confusion with, and took unfair advantage of, Specsavers' trademarks. Specsavers alleged passing off and trademark infringement pursuant to Articles 9(1)(b) and 9(1)(c) of the Community Trademark Regulation (207/2009), relying on the word mark SPECSAVERS, a word-and-device mark consisting of two overlapping ovals with the word 'Specsavers', and a device mark consisting of two overlapping ovals.

The case made its way to the Court of Appeal, which decided to refer a number of questions to the ECJ to obtain guidance on certain points, and today, the ECJ gave its answers.

As Jeremy Drew, partner at RPC, and Ben Mark, senior associate, explain, there are two interesting aspects of this decision:

  1. Where a brand owner owns separate registrations for a device mark and a word mark and has also registered the two in conjunction as a composite mark (with the word mark superimposed over the device mark), the use of the composite mark is capable of amounting to use of the device mark for the purposes of Article 15 of Regulation 207/2009, provided that the way in which the composite mark is used does not change the distinctive character of the device mark as registered.

  2. Where a trademark has not been registered in colour, but the brand owner has used it extensively in a particular colour such that it has become distinctive, this is relevant in the assessment of the likelihood of confusion under Article 9(1)(b) and unfair advantage under Article 9(1)(c) of the regulation.

With regard to the first point, Drew and Mark note that the decision comes off the back of the ECJ’s decision in Colloseum Holding (Case C-12/12), in which it was held that a registered trademark can be put to genuine use through its use within a composite mark or in conjunction with another mark. In Colloseum Holding, the ECJ had referred to its previous ruling in Nestlé (Case C-353/03) that a trademark might acquire distinctiveness through use as part of a registered trademark. The decision in the present case thus appears to be a natural extension of earlier case law.

“This decision will be welcomed by brand owners who hold separate word and graphic device marks which they use as a composite mark”, say Drew and Mark. “They can maintain their registrations for their device marks and enforce them against third parties, even if the device marks have not been used on their own, provided that the distinctive character of the device marks is not changed when used within the composite mark. It's fair to say that the old ‘use it or lose it’ mantra is no longer an absolute.”

What does this mean in practical terms? “Brand owners will now likely rely on their device marks, as opposed to their composite marks, when enforcing their rights against owners of copycat brands - the device mark, as opposed to the composite mark (which includes the brand owners’ ‘house’ brand), is more likely to be considered similar to a third party's composite mark (which includes the copycat's ‘house’ brand). This decision should therefore act as a deterrent to owners of copycat brands who simply superimpose their own ‘house’ mark to logos that are similar or identical to those of well-known brand owners”.

However, it is the second point that is perhaps the more novel aspect of the decision. Drew and Mark explain: “It is accepted in the decision that a logo registered in black and white is deemed registered for all colours; it therefore provides broad protection. There had been calls for the ECJ to provide clarity and thankfully, we now have it. Following this decision, not only will brand owners continue to benefit from the broad protection afforded to logos registered in black and white, but now they will also benefit from the enhanced distinctiveness of a particular colour through use without the need to register the logo in that particular colour. The obvious benefit is that it avoids the need for brand owners to register multiple marks for each different colour that may be in use.”

The ECJ’s decision will be assessed in more detail in WTR Daily’s Premium Updates. 

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