Specsavers International Healthcare Ltd & Ors v ASDA Stores Ltd & Anor

For genuine use of a registered figurative trade mark, the court must determine whether use in a composite form has altered the distinctive character of the registered mark. The registered mark must itself still be perceived by the average consumer as indicating the commercial origin of the goods or services. Actual use in a particular colour may be considered where it affects that perception.

Registration of the composite mark does not prevent such use from constituting genuine use of the component mark. The assessment is fact-sensitive. Although a background device will generally not indicate origin, compelling evidence may show that consumers perceive it as a trade mark in its own right.

Specsavers appealed from Mann J’s order, [2010] EWHC 2035 (Ch), which revoked its Community registration for a wordless overlapping-ellipses logo for non-use. Specsavers had extensively used a shaded composite logo comprising the ellipses and the word “Specsavers”.

The earlier stage of the appeal led to a reference to the Court of Justice, which answered the relevant questions in Case C-252/12. The parties then settled all issues between themselves. By agreement, Specsavers continued only its appeal against revocation of the wordless logo. The Registrar of Trade Marks intervened to assist the court in protecting the public interest.

The central issue was whether use of the composite logo amounted to genuine use of the registered wordless logo.

1. Appeal allowed. The court held that Specsavers had made genuine use of the wordless logo. The order revoking that mark could not stand.

2. Under Articles 15(1) and 51(1)(a) of Council Regulation (EC) No 207/2009/EC, use of a figurative mark in conjunction with a superimposed word mark may constitute genuine use. The decisive question is whether the differences between the used form and the registered form alter the registered mark’s distinctive character. Where the registered mark is used within a composite mark, it must itself be perceived as indicating the origin of the goods or services.

3. The court was entitled to consider the colour in which the mark had consistently been used, because the wordless mark was registered without a colour limitation and colour could affect average-consumer perception. Extensive use of the composite logo, its use on signage, the distinctiveness of the ellipses in the market, and Asda’s internal recognition of the device as Specsavers’ logo established that consumers perceived the overlapping green ellipses as denoting Specsavers. The wordless device was perceived as a trade mark, rather than mere background.

4. The previous finding that Asda’s logo did not create a likelihood of confusion under Article 9(1)(b) did not preclude that conclusion. The infringement comparison involved the particular retail context, differing wording and ellipses which touched rather than overlapped.

5. The court emphasised that genuine-use questions depend on all the circumstances. In general, a mark’s background will not be perceived as an indication of origin, but the evidence in this unusual case justified that finding.

• Court of Appeal (Civil Division): Allowed Specsavers’ remaining appeal and set aside revocation of the wordless logo: [2014] EWCA Civ 1294.
• Court of Justice of the European Union: Answered questions referred at the earlier appeal stage concerning genuine use and colour in Case C-252/12.
• Court of Appeal (Civil Division): Decided other issues and made the reference to the Court of Justice: [2012] EWCA Civ 24.
• High Court, Chancery Division: Mann J revoked the wordless logo for non-use: [2010] EWHC 2035 (Ch).