Clarification on a long-running trademark spat between Asda and Specsavers has been issued by the Court of Justice of the European Union (CJEU).
The battle, which has been running since 2009 (News 03.11.09) was the result of an Asda campaign in the same year which invited patients to ‘Be a real spec saver at Asda,’ and offered ‘Spec savings at Asda’. A green, oval-based logo, similar to that of the multiple’s was also used.
A High Court judgement ruled that some aspects of Asda’s campaign did not infringe Specsavers’ trademarks but the Court of Appeal said that Specsavers’ figurative marks could prevent Asda from using the slogans and logos. Both parties claimed victory (News 13.08.10) and the Court of Appeal referred the matter to CJEU for clarification.
The CJEU addressed two main questions from the Court of Appeal. The first related to whether the use of the double overlapping oval logo with the word ‘Specsavers’ superimposed could account for genuine use of a shape figurative trademark.
The court said where a mark is used in a different form to that in which it has been registered, the use of the variant could only be genuine use if that variant did not alter the distinctive character of the mark as registered. It accepted that Specsavers’ use of its composite logo could be considered a ‘genuine use’.
The second question was whether Asda’s use of the colour green, which Specsavers has always used to represent its wordless logo mark but was registered in black and white, could cause confusion and take unfair advantage.
The CJEU said it recognised that colour affected the way marks were perceived by consumers in practice. As a result, it acknowledged similarities in colour where the brand owner had used its mark extensively in a particular colour and had become widely associated with it. Consequently, Asda’s choice of a similar colour was relevant to the assessment of confusion and unfair advantage.