The five-year trademark battle between Specsavers over the use of a wordless logo by UK supermarket chain ADSA is finally over, with a ruling for Specsavers by the European Court of Justice Court of Appeal.
The legal dispute began as a result of a 2009 Adsa advertising campaign, targeting Specsavers. Asda is Britain’s second largest supermarket chain, and has in-house optical stores.
As part of its campaign, Asda used logos, which consisted of non-overlapping oval shapes in a light shade of green with the written words ‘Asda Opticians’ on them. It also used slogans such as ‘Be a real spec saver at Asda’ and ‘Spec Savings at Asda’.
Specsavers launched the legal action, claiming that by using the logos and slogans, Asda had infringed its registered trademarks. It said the Asda campaign was likely to cause confusion with, and took unfair advantage of, Specsavers’ registered trademarks.
Specsavers held registered word marks for ‘SPECSAVERS’ and registered logo marks consisting of overlapping oval shapes with the written words ‘Specsavers’ on them. The marks were not registered for a particular colour but Specsavers used the logos extensively in a particular shade of green.
The High Court revoked Specsavers’ wordless logo mark, saying it had never been used in isolation.
Asda and Specsavers settled their infringement dispute in 2012, taking Asda out of the legal proceedings. The terms of that settlement are confidential. However, Specsavers pursued the case, taking the issue to the European Court of Justice (ECJ) in a hearing that hinged solely on whether or not Specsavers could restore its wordless trademark, enabling it to defend its logo in the future.
The ECJ ruled that the use of a distinctive logo shape could count as an infringement and referred the matter back to the Court of Appeal to make a final decision. In place of Asda, the Court of Appeal asked the Register of Trademarks to step in. Handing down its ruling in October, the Court of Appeal ruled Specsavers should be able to retain a trademark for its oval shape alone.
CoA Judgement
In its ruling, the Court of Appeal said it took into account the way Adsa considered Specsavers’ logo when it developed its own marketing campaign.
In documents disclosed to the hearing, it was revealed the supermarket’s marketing team generated three logos: “the Specsavers logo”, a second option named “close to Specsavers” and “alternative logo – our own version”.
The Court accepted the evidence of Dame Mary Perkins, Senior Executive and co-founder of Specsavers, that when she visited cities and towns where Specsavers has an outlet, the first thing she does is “look for the shapes” and taxi drivers recognise the overlapping green ellipses.
The leading judge said that “…her evidence seems to me to confirm my own impression that, from a distance, the word Specsavers does not stand out and it is the green overlapping ellipses which catch the eye”.
Lord Justice Kitchin said he had “come to the conclusion that, in the rather unusual circumstances of this case and notwithstanding my initial impression to the contrary, Specsavers have established that much of the use they have made of the shaded logo mark including, in particular, its use on signage, does also constitute use of the wordless logo mark”.
“The evidence in this case shows that it has been such that the wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers,” Lord Justice Kitchin said in the Court’s judgement.
“In short, much of that use has been such that the differences between the shaded logo mark
and the wordless logo mark have not changed the distinctive character of the wordless logo mark; and the wordless logo mark has itself been seen as a trade mark and not simply as background.
“It follows that Specsavers have established that they have made genuine use of the wordless logo mark,” the judge said.
Lord Justice Kitchen said the Registrar of Trade Marks had expressed concern that, if Specsavers won the appeal, he “may be faced with many applications to register relatively commonplace outline shapes of logo marks”.
“For my part,” Lord Justice Kitchen ruled, “I am entirely content to emphasise that each and every case must be decided on its own facts and in the light of all the relevant circumstances.
“I would go further and say that, in general, it is unlikely that the background of a mark will be perceived by the average consumer as an indication of origin. This is, however, an unusual case and Specsavers are supported in their appeal by what I consider to be the convincing evidence I have described.”
The Lord Chief Justice of England and Wales and Lady Justice Black agreed, making it a unanimous ruling.
