Questions referred to ECJ regarding role of colour in assessing confusion
In Specsavers International Healthcare Ltd v Asda Stores Ltd ( EWCA Civ 24, January 31 2012), the Court of Appeal has partially upheld an appeal by Specsavers in its claim for trademark infringement against Asda, but has also referred a number of questions to the Court of Justice of the European Union (ECJ) in order to determine some remaining grounds of appeal.
Before the High Court, Specsavers claimed that Asda's marketing of its in-store opticians using a logo comprising two ovals and the words ASDA OPTICIANS, and material 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 for SPECSAVERS as a word only mark, a mark comprising the word 'Specsavers' superimposed over a device of two overlapping ovals, and a further mark comprising only the overlapping ovals.
Before the High Court, all of Specsavers' claims failed except for a finding of unfair advantage in relation to the strapline 'Be a real spec saver at Asda'.
Lord Justice Kitchin, who gave the leading judgment in the Court of Appeal, agreed with Mr Justice Mann's finding that the strapline 'Be a real spec saver at Asda' took unfair advantage of Specsavers' word mark pursuant to Article 9(1)(c) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). However, Kitchin LJ considered that the same should have been found in respect of the strapline 'Spec savings at Asda'.
Visually and aurally, 'spec savings' was closely related to SPECSAVERS and, conceptually, the words conveyed the same idea of spectacles and value. Consequently, Kitchin LJ considered that the average consumer would form a link with Specsavers when viewing the strapline. He was confirmed in this view by the fact that it had been Asda's intention to refer to Specsavers. This was a relevant factor to take into account in a situation such as this, where Asda had experience of the relevant market and an understanding of how the average consumer would react to use of the sign. Once such a link had been established, Kitchin LJ formed the view that Asda had taken unfair advantage by seeking to benefit from the power of attraction of the Specsavers brand and Specsavers' marketing efforts.
Similarly, Kitchin LJ considered that it was appropriate to take into account the cumulative effect of Asda's marketing campaign when considering whether the 'Asda Opticians' logo took unfair advantage of Specsavers' marks. The logo had been used in close association with the straplines and, as a result, the resonance of Asda's logo with Specsavers' logo was considerably enhanced. Having regard for all of the circumstances, including Specsavers' considerable reputation, the use of the 'Asda Opticians' logo as part of a wider campaign and Asda's intention to target the campaign at Specsavers, Asda's use of the logo also took unfair advantage of Specsavers' marks.
However, the Court of Appeal upheld Mann J's judgment that there was no likelihood of confusion as a result of Asda's use of the 'Asda Opticians' logo and straplines, pursuant to Article 9(1)(b) of the regulation, save in one respect.
Specsavers submitted that Mann J had been incorrect in not attaching any significance to the enhanced reputation enjoyed by Specsavers in the colour green as part of the global appreciation test. Mann J had considered that colour used in relation to a mark could not be taken into account, following the Court of Appeal's judgment in L’Oréal SA v Bellure NV ( EWCA Civ 968), which had rejected the consideration of anything extraneous to the mark as registered for the purposes of comparison in the global appreciation test.
Kitchin LJ thought it appropriate to refer questions to the ECJ on the grounds that the case law on the point was not clear. However, he expressed a provisional view that Mann J had been incorrect; a mark registered in black and white, without limitation as to colour, was registered in respect of all colours. If a logo registered in black and white has acquired, through use, a distinctive character in a particular colour, such as green, that was a matter which ought to be taken into account as part of the global appreciation analysis. Despite this, Kitchin LJ was of the view that consideration of colour made no difference to the conclusion of likelihood of confusion for Specsavers' mark except for its device only mark.
Further, Specsavers challenged Mann J's judgment that its device mark of two overlapping ovals, which was only ever used with the superimposed word 'Specsavers', should be revoked on the grounds of non-use. Kitchin LJ also considered that it would be appropriate to refer questions to the ECJ for guidance on this point, to determine whether Specsavers' use of the device and word mark could constitute use of the device-only mark as well.
In referring questions to the ECJ, Kitchin LJ left it open to Specsavers to argue that its device-only mark had been infringed under Article 9(1)(b) or 9(1)(c) (in the event that the mark was incorrectly revoked). He recognised that the claim for infringement of Specsavers' device-only logo by the 'Asda Opticians' logo was stronger than the claim based on Specsavers' device and word mark, because it did not contain the word 'Specsavers'.
The questions referred to the ECJ were as follows:
"A. Where a trader has separate registrations of Community trademarks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?
B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trademark?
C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?
D. Where a Community trademark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?
E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?"
Jennifer Gibson, Burges Salmon LLP, Bristol
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