Let's take another look at Specsavers v Asda

Well-known optical retailer Specsavers uses a logo composed of green overlapping ellipses overlaid with its name ( you can see their branding here). Specsavers had registered as a Community trade mark a black "wordless" version of the linked ellipses. Asda started using branding for its own opticians service that included ellipses that touched but did not overlap, overlaid with the words "ASDA" and "Opticians" in each ellipse.  Specsavers sued Asda for trade mark infringement.

This case has been to the European court and back and now – hopefully in its last appearance – has been looked at by the English Court of Appeal. Asda and Specsavers having settled their differences, the Court of Appeal had to deal with a dispute between the UK registrar of trade marks and Specsavers, with essentially the following question.

Had Specsavers made enough use of their "wordless" linked ellipses mark through the use of the green logo with their name? (Failure to make genuine use of a registered trade mark for five years means that it can be struck off the register.)

The Court of Appeal allowed the appeal by Specsavers –  the registration of the wordless mark should not be revoked for non-use. Specsavers had made genuine use of the  "wordless"  mark through extensive use of the green logo with their name. 

So should everyone register a mark of just the background shape of their logo, as well as the full logo? The trade marks registrar was concerned about the prospect.

The judge was keen to emphasise that this was an unusual case. He said that cases of this type had to be determined on their facts. Here Specsavers had managed to show that consumers do see the overlapping ellipses as indicative of Specsavers and not merely as background. Examples of taxi drivers looking out for overlapping green ellipses were mentioned.

The judge said in passing that ‘The mark appears in this image in black. It is, however, registered without any colour limitation and so is registered in respect of all colours'.

How this fits together with the EU's recently issued common approach on the use of black and white marks, discussed here, is shrouded in darkness.

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