There are lessons to be learnt from the long-running Specsavers saga. Although the matter is quite complex it can, I think, be summarised as follows:
- The eye-care chain, Specsavers, has two Community (EU) Trade Mark registrations. One is for a logo that consists of overlapping elliptical devices ('the Logo Mark'), and one is for that same logo with the name Specsavers superimposed on it ('the Combination Mark').
- Although Specsavers does not use the Logo Mark on its own, it does use the Combination mark extensively.
- When retail chain, Asda, copied the Logo Mark for its in-store optician service - which it used in conjunction with the very cheeky slogan 'Be a spec saver at Asda' - Specsavers sued for trade mark infringement.
- Asda countered by applying for the cancellation of the Logo Mark, claiming non-use.
- Specsavers fought back by arguing that its use of the Combination Mark should be regarded as use of the Logo Mark.
The matter went all the way to Europe's highest court, the Court of Justice of the European Union (CJEU), which handed down guidelines. The case then went back to the UK Court of Appeal to decide whether or not the registration for the Logo Mark should be cancelled. This decision came out recently.
The UK court held that the registration for the unused Logo Mark was secure. Why? Because trade mark law does provide some flexibility in matters of use, for example the South African Trade Marks Act says that when proof of use is required the authorities can accept proof of use of a trade mark 'with additions or alternations not substantially affecting its identity'.
But surely the addition of the word 'Specsavers' substantially affects the identity of a trade mark that simply consists of overlapping elliptical devices? The UK court felt that the critical issues were in fact these - the distinctive nature of the Logo Mark was not affected in the Combination Mark, and the public did perceive the Logo Mark as a separate trade mark underneath the Combination Mark. What was important, said the court, was that the public still regarded the Logo mark as an indicator of source or origin. The court said that the average consumer 'has perceived and does perceive the (Logo Mark) as indicative of origin of the goods and services supplied by Specsavers.' It went on to say this: 'The differences between the (Combination Mark) and the (Logo Mark) have not changed the distinctive character of the (Logo Mark); and the (Logo Mark) has itself been seen as a trade mark and not simply as background.'
So why did the court come to this conclusion? Well, Specsavers seemingly submitted lots of evidence, evidence that the court felt was very important. For example, the court found that it was very relevant that Specsavers had used the Combination Mark on a large scale. The court was also influenced by the fact that both the Combination Mark and the Logo Mark were different from any logos used by competitors, so this was not a case of a company trying to monopolise something common. The court also accepted evidence that consumers recognise the Logo Mark on signage on stores as indicating Specsavers, even if the word Specsavers is not visible.
But what really seems to have swung it is that some pretty damming documents came to light (presumably in discovery). These revealed that Asda had clearly set out to copy the Logo Mark. The documents showed that the Asda people charged with coming up with an identity for the new in-store optician service had used expressions like these to describe the logo that they finally settled on: 'Asda version of Specsavers'; 'Rip off'; 'the Specsavers logo'. This was, said the court, 'very persuasive evidence' of how the Logo Mark was perceived. If Asda thought that the Logo Mark was worth copying, it was safe to assume that it served as a powerful source indicator or trade mark for Specsavers.
The court did, however, emphasize that the facts of this case were unusual, and that cases where the background of a trade mark is seen by the average consumer as an indication of origin will be rare.
So what are the lessons to be learnt? Well, trade mark owners need to think hard about what they register, because it's not uncommon for a logo to simply be used as the background for the brand name. You should certainly register the brand name on its own in order to maximise your protection of that. You should also register the logo on its own in order to maximise your protection there. But there will always be a chance that your logo registration could be attacked for non-use. Which means that you should also register the combination mark separately, in order to ensure that there is always some protection for the logo. Another thing you can do, of course, is to make sure that you do make some separate use of the logo.
The other lessons. Don't copy. And if you must, don't put it in writing!
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