When words are irrelevant ... CJEU rules on Specsavers' logo reference

When Kitty gets down
to the nitty gritty ...

This Kat had quite forgotten that the ruling of the Court of Justice of the European Union in Case C‑252/12, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, was coming out last week.  If his memory fails him occasionally, that of his readers may also be fallible. Accordingly he takes this opportunity to refresh theirs with a quick summary of the facts.   In October 2009 Asda -- the British subsidiary of the Walmart chain of supermarkets -- launched an advertising campaign for spectacles that targeted the Specsavers group (the largest chain of opticians in the United Kingdom and Asda’s main competitor in this market). In the context of this campaign, Asda used the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at ASDA’, together with a number of logos reminiscent of those of Specsavers.  Specsavers sued for infringement of its Community trade marks.

Without the word ...

In October 2010 the High Court, England & Wales, not only held that Asda had not infringed Specsavers' Community trade marks but revoked its wordless logo mark (left) for non-use. Specsavers had more luck in the Court of Appeal though: it held the company entitled to prevent Asda from using the slogans ‘Be a real spec saver at Asda’ and ‘Spec savings at Asda’ as well as the logo used by Asda in its advertising campaign. However, in order to rule on the aspect of the dispute concerning the wordless logo mark, it was necessary for it to refer the following questions to the CJEU for a preliminary ruling:

‘1. Where a trader has separate registrations of Community trade marks for

(a) a graphic device mark

(b) a word mark

and uses the two together, is such use capable of amounting to use of the [figurative] mark for the purposes of Articles 15 and 51 of Regulation [No 207/2009]? If yes, how is the question of use of the graphic mark to be assessed?

2. Does it make a difference if:

(a) the word mark is superimposed over the [figurative element]?

(b) the trader also has the combined mark comprising [the figurative element] and [the] word mark registered as a Community trade mark?

3. Does the answer to [the first and second questions] depend upon whether the graphic device and the words are perceived by the average consumer as [on the one hand] being separate signs; or [on the other hand] each having an independent distinctive role? If so, how?

4. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the [European Union]) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of [either the] likelihood of confusion under Article 9(1)(b) [of Regulation No 207/2009], or unfair advantage under Article 9(1)(c) of[that regulation]? If so, how?

5. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?’

Last week, in 51 paragraphs, the Third Chamber of the CJEU came up with the following answers::

... and with it ..

1. Article 15(1) and Article 51(1)(a) of Council Regulation ...  207/2009 ... must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.

... and now in colour

2. Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.

3. Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of that provision.

Says the IPKat, it was improbable, bordering on the impossible, that the CJEU would come up with a different ruling in the light of its ruling this April in Case C-12/12 Colloseum.

Words: Tom Tom Club, here (minor classic)
It's Only Words here