ECJ provides guidance on genuine use and relevance of colour

In Specsavers International Healthcare Ltd v Asda Stores Ltd (Case C-252/12, July 18 2013), the Court of Justice of the European Union (ECJ) has confirmed that use of a figurative mark in conjunction with a superimposed word mark, the combination of which is also a registered Community trademark (CTM), may constitute genuine use of the figurative mark. In addition, where a CTM is not registered in colour, but the proprietor has used it extensively in a particular colour to the extent that it has become associated in the mind of a significant portion of the public with that colour, the colour which a third party uses in order to represent a sign alleged to infringe that CTM is relevant to the global assessments of the likelihood of confusion or unfair advantage. Equally relevant to the global assessments of the likelihood of confusion or unfair advantage is whether the third party making use of a sign which allegedly infringes the CTM if it is itself associated, in the mind of a significant portion of the public, with the colour which it uses for the representation of that sign.

The dispute arose from a marketing campaign conducted by Asda, a well-known UK supermarket chain. Proceedings were commenced by the opticians chain Specsavers, for passing off and trademark infringement under Articles 9(1)(b) and 9(1)(c) of the the Community Trademark Regulation (207/2009).

Specsavers uses the following logo in connection with its business (the 'Specsavers logo'):

Specsavers' trademark claims were based on a number of registrations, including:

• CTM 1321298 and 3418928, consisting of the word 'Specsavers' (the 'word marks').
• CTM 449256 and 1321248, consisting of the Specsavers logo without any colour limitation (the 'shaded logo' marks):
  
• CTM 5608385, consisting of two overlapping logos with the word 'Specsavers' written across them, but without a different shade in the area of overlap (the 'unshaded logo' mark):
  
• CTM 1358589, consisting of the logo in a single block colour without the word 'Specsavers' (the 'wordless logo' mark):
  

In 2009 Asda launched a marketing campaign, which included two straplines containing deliberate references to Specsavers:

1. "Be a real spec saver at Asda"; and
2. "Spec savings at Asda".

In addition, Asda adopted a new logo (the 'Asda logo') in the form below:

The particular green used by Asda is the same light green which it widely uses in connection with its business.

In its July 30 2010 decision, the High Court rejected Specsavers' passing-off claim and the trademark allegations under Article 9(1)(b). Whilst Asda had been “living dangerously”, this did not amount to evidence of an intention to confuse. The only infringement concerned the use of the first strapline on the basis that it took unfair advantage of Specsavers' word marks under Article 9(1)(c). The judge also revoked the wordless logo mark for non-use.

In a decision dated January 31 2012, the Court of Appeal agreed that the first strapline took unfair advantage of the word marks under Article 9(1)(c). In addition, the second strapline infringed Specsavers' word marks, as well as its shaded and unshaded logo marks, and the Asda logo infringed the shaded and unshaded logo marks under Article 9(1)(c). However, the Court of Appeal held that neither the first nor the second strapline, nor the Asda logo, infringed any of the trademarks under Article 9(1)(b). The court agreed that Asda was living dangerously, but this did not constitute an intention to confuse.

The Court of Appeal considered that, in order for it rule on the wordless logo, it was necessary to seek the guidance of the ECJ on the following issues:

1. whether use of the shaded logo constituted genuine use of the wordless logo when considering revocation for non-use;
2. whether the enhanced reputation of the wordless logo in the colour green (which Specsavers has always used) was relevant in the global assessments of likelihood of confusion and unfair advantage, despite the registration only being in black and white; and
3. if so, whether it was relevant as part of the global assessment that Asda was itself associated in the mind of a significant portion of the public with the green used in the Asda logo.

Article 51(1) of the regulation provides that a CTM may be revoked if it has not been put to genuine use for five years. Article 15(1)(a) then provides that such use can be "use in a form differing in elements which do not alter the distinctive character of the registered CTM".

The ECJ noted that the distinctive character of a trademark can be the result of both the use, as part of a registered trademark, of a component thereof and the use of a separate mark in conjunction with a registered mark. It is sufficient that, in consequence of such use, the relevant class of persons perceives the product or service as originating from a given undertaking.

The ECJ has already held that genuine use of a trademark, within Article 15(1), can be satisfied where the trademark is used only through another composite mark, or where it is used only in conjunction with another mark, and the combination of those two marks is itself registered as a trademark (Colloseum Holding (Case C-12/12), Paragraphs 35 and 36). Moreover, the proprietor of a registered trademark is not precluded from relying, in order to establish use of a trademark, on the fact that it is used in a form which differs from the form in which it is registered, without the differences altering the distinctive character of the trademark (Rintisch (Case C-553/11), Paragraph 30).

In respect of the first issue, the ECJ therefore held that use of the wordless logo in conjunction with the superimposed word mark may be considered genuine use of the wordless logo mark and this is not affected by the combination of the two also being a separate registered CTM.

In respect of the second and third issues, the ECJ noted the settled principle that the more distinctive a trademark, the greater the likelihood of confusion. Similarly, unfair advantage is examined on a global assessment, including the distinctive character of the mark. The use of a black and white registration in a particular colour affects how the average consumer perceives the registered mark so this is relevant to the likelihood of confusion or unfair advantage.

Equally, another relevant consideration in the global assessment of confusion or unfair advantage is the context of the use of the allegedly infringing sign, including the use of that sign in a particular colour. The use by Asda of a similar colour to Specsavers and the fact that Asda is itself associated with that colour might influence the public's perception of the signs at issue and the likelihood of confusion or unfair advantage.

This decision is straightforward and uncontroversial, particularly following the previous decisions of the ECJ in Colloseum Holdings and Rintish.

The court's interpretation on genuine use avoids the imposition of a requirement for strict conformity between the forms of a mark as registered and as used in trade. This allows trademark proprietors to make variations in the sign to enable it better adapt to the marketing and promotion requirements of the goods and services concerned. It also ensures conformity with Article 5(C)(2) of the Paris Convention, which provides that registration of a trademark should not prevent reliance on use of the sign to establish use of another trademark.

The decision on use of particular colours also confirms the ECJ jurisprudence that all factors are relevant to the global assessments on confusion and unfair advantage.

James Martin, Field Fisher Waterhouse LLP, London