Specsavers Wins Back its (Wordless) Logo
A Court of Appeal judgment this week has reinstated Specsavers’ revoked Community trade mark registration for its “Wordless Logo” – that is its mark for two overlapping ellipses.
During the course of Specsavers’ litigation against Asda for trade mark infringement and passing off, this registration was revoked by the trial judge on the basis of non-use, the judge finding that use of the overlapping ellipses with the word “Specsavers” superimposed did not amount to use of the Wordless Logo.
When the finding was appealed by Specsavers, the Court of Appeal referred the issue of non-use to the Court of Justice in Europe. The CJEU determined, in principle, that a base mark such as the overlapping ellipses might still be used even if a word or words were superimposed over it, provided that the distinctive character of the mark was not affected. The matter then returned to the Court of Appeal which considered whether, in fact, the Wordless Logo had been used by Specsavers (HGF acted for Specsavers in this hearing).
An important issue for consideration was whether, when Specsavers used its very well-known green ellipses with the “Specsavers” word superimposed over them, the relevant public actually saw or perceived the Wordless Logo underneath. In this respect, Specsavers was able to point to evidence that, when formulating its marketing campaign, Asda's marketing team had produced a series of potential logos it could use, each of which, to varying degrees, was modelled on Specsavers’ overlapping ellipses.
Specsavers was able to establish that this evidence coupled with other evidence demonstrated that the overlapping ellipses had a separate identity from the form in which its branding was used in practice, that is with the word “Specsavers” always superimposed over the ellipses. The Court of Appeal determined that the average consumer “has perceived and does perceive the Wordless Logo mark as indicative of origin of the goods and services supplied by Specsavers”; essentially the Wordless Logo alone is recognised by members of the public as connoting goods and services supplied by Specsavers.
Because the Wordless Logo is perceived and recognised by consumers as a trade mark and not just as background, its distinctive character was not and is not altered by superimposing the word “Specsavers” over it.
Overall, this is a positive result for brand owners as it shows that it can be possible to maintain a registration for a figurative mark that is always used with a word mark or other mark superimposed. But the addition of the second mark or sign must not alter the distinctive character of the base mark or its ability to identify goods and services as those of a particular business.
However, the Court of Appeal emphasised that the factual background to this case was unusual and that each case will need to be determined on its particular facts. In this respect, the court evidently had in mind the specific (and persuasive) evidence that Specsavers was able to produce about the way in which Asda’s marketing teams had perceived Specsavers’ branding. Many brand owners may therefore be slightly less reassured about the security of their trade mark protection for their “base” marks if those marks are only ever used in conjunction with other marks superimposed over them.