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

Factual and Procedural Background

This judgment concerns an appeal by the Plaintiff against parts of a prior order made by Judge Mann, which declared that certain aspects of the Defendant's marketing campaign did not infringe the Plaintiff's registered trade marks and ordered revocation of the Plaintiff's Community trade mark No.1358589 (the "Wordless logo" mark). The Defendant cross-appealed against a finding of infringement. The appeal was initially heard in October 2011, with some issues referred to the Court of Justice of the European Union (CJEU) for interpretation of relevant articles of Council Regulation (EC) No 207/2009/EC. Following the CJEU's judgment, the parties settled their dispute on confidential terms, except for the issue of the revocation of the Wordless logo mark, which remains for determination. The Registrar of Trade Marks intervened in the appeal to protect the public interest concerning the validity of trade marks.

Legal Issues Presented

1. Whether use of a Community figurative trade mark combined with a Community word mark superimposed over it, where the combination is also registered, can constitute genuine use of the figurative mark under Articles 15 and 51 of Regulation 207/2009/EC.
2. How to assess genuine use of the graphic mark when used with a superimposed word mark.
3. Whether the perception by the average consumer of the graphic and word elements as separate signs or as having independent distinctive roles affects the assessment of genuine use.
4. Whether the colour in which a Community trade mark registered in black and white is used, and the association of that colour with the mark by the public, is relevant in assessing likelihood of confusion or unfair advantage under Article 9(1)(b) and (c) of Regulation 207/2009/EC.
5. Whether the defendant's association with a colour used in the accused sign affects the global assessment of likelihood of confusion or unfair advantage.

Arguments of the Parties

Appellant's Arguments

• The Plaintiff argued that use of the combined "Shaded logo" mark, which includes the Wordless logo with the word mark superimposed, constituted genuine use of the Wordless logo mark.
• The Plaintiff contended that the overlapping ovals in the Shaded logo had an independent distinctive role and were recognized by the average consumer as indicative of the Plaintiff's origin.
• Extensive use of the Shaded logo in all aspects of the Plaintiff’s business and marketing supported the claim of genuine use of the Wordless logo mark.

Respondent's Arguments

• The Defendant sought revocation of the Wordless logo mark for non-use, relying on Articles 15 and 51 of the Regulation.
• The Defendant argued that use of the Shaded logo mark, which includes the word mark superimposed on the Wordless logo, altered the distinctive character of the Wordless logo mark and thus could not constitute genuine use of it.
• The Defendant also contended that the Plaintiff had failed to establish likelihood of confusion arising from the use of the overlapping ovals alone.

Registrar's Arguments

• The Registrar intervened to protect the public interest by preventing invalid trade marks from being restored to the Register.
• The Registrar presented counter-arguments to the Plaintiff’s appeal while maintaining a balanced position consistent with the Registrar’s role.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2006] EWCA Civ 244	Registration of marks without colour limitation means marks are registered in all colours.	The Court confirmed that the Wordless logo mark is registered without colour limitation, thus covering all colours.
Colloseum Holding AG v Levi Strauss & Co [2012] ECR I-0000 (C-12/12)	Genuine use of a trade mark may be satisfied where the mark is used only through another composite mark or in conjunction with another mark, if the combination is also registered.	The Court relied on this to hold that use of the Wordless logo mark with the superimposed word mark can constitute genuine use.
Rintisch v Eder [2012] ECR I-0000 (C-553/11)	A proprietor can rely on use of a mark in a form differing from the registered form, provided the distinctive character is not altered.	Supported the conclusion that use of the Wordless logo mark with the superimposed word mark does not necessarily alter its distinctive character.
Société des Produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135 (C-353/03)	Distinctive character of a mark may arise from use of a component of a registered trade mark or use of a separate mark in conjunction.	Supported the view that the Wordless logo mark’s distinctiveness could be derived from use in combination with the word mark.
Halliburton Energy Services Inc's Patent [2006] RPC 26	Procedural practice regarding appeals with no respondent and intervention by the Registrar of Trade Marks.	The Court followed this practice in allowing the Registrar to intervene in the appeal.

Court's Reasoning and Analysis

The Court analysed whether the use of the Wordless logo mark combined with the superimposed word mark (the "Shaded logo" mark) constituted genuine use under Articles 15 and 51 of Council Regulation (EC) No 207/2009/EC. It applied the CJEU's interpretation that genuine use can be satisfied where the figurative mark is used in conjunction with a word mark superimposed over it, and where the combination is also registered, provided the distinctive character of the figurative mark is not altered.

The Court emphasised that the assessment must consider whether the mark as registered serves to identify the goods or services of the proprietor, and whether the average consumer perceives the figurative mark as indicative of origin when used as part of the composite mark.

It acknowledged that the Plaintiff’s use of the Shaded logo mark was extensive and well-established across multiple channels and over many years, with significant market presence and advertising investment. The Court found persuasive evidence that the overlapping ellipses (the Wordless logo) have an independent distinctive role and are recognized by the average consumer as denoting the Plaintiff’s goods and services.

The Court rejected the argument that the presence of the word mark altered the distinctive character of the Wordless logo mark to the extent that genuine use could not be established. It also distinguished the issue of genuine use from the prior finding that the Defendant’s use did not infringe the Plaintiff’s marks, noting differences in the marks and context of use.

The Court further considered the relevance of colour, holding that although the Wordless logo mark is registered without colour limitation, the colour in which it is used affects consumer perception and is relevant to the assessment of likelihood of confusion and unfair advantage.

Finally, the Court acknowledged the Registrar’s concern about potential proliferation of registrations for common shapes but emphasized that each case must be decided on its own facts, and that the present case is unusual with strong evidence supporting genuine use.

Holding and Implications

The Court ALLOWED THE APPEAL, holding that the Plaintiff has established genuine use of the Wordless logo mark through its use of the Shaded logo mark, including the overlapping ellipses as perceived by the average consumer as indicative of the Plaintiff’s goods and services.

The direct effect of this decision is to overturn the revocation of the Wordless logo mark on grounds of non-use. The Court did not set new precedent beyond the application of established principles to the particular facts of this case. The ruling underscores that use of a figurative trade mark in combination with a word mark, where the combination is registered and does not alter the distinctive character of the figurative mark, can constitute genuine use for the purpose of trade mark protection.