The Court of Appeal allowed an uncontested appeal against the High Court’s revocation for non-use of a figurative Community trade mark (CTM) for a wordless logo.
Registered trade marks may be revoked where there has been no genuine use of the mark for a continuous five-year period, and there are no proper reasons for non-use (section 46(1)(b), Trade Marks Act 1994 and Article 51(1)(a), CTM Regulation (207/2009/EC) (Article 51(1)(a))).
S sued A for trade mark infringement following A’s use of a logo and straplines in a marketing campaign. S relied on various CTMs including a figurative wordless CTM consisting of two overlapping ellipses (the wordless CTM).
A sought to revoke the wordless CTM for non-use under Article 51(1)(a). In its response to A’s revocation claim, S relied on its use of its logo CTM consisting of the word SPECSAVERS against a background of two overlapping ellipses (the logo CTM).
The High Court held that the wordless CTM was not infringed and also revoked it for non-use (www.practicallaw.com/2-503-1590). S appealed.
The Court of Appeal stayed an appeal against the decisions on the wordless CTM pending a reference to the European Court of Justice (ECJ) on whether the use of a CTM only as part of a composite registered mark could amount to genuine use of the CTM (www.practicallaw.com/7-518-1704). The ECJ ruled that it could (www.practicallaw.com/8-539-0047).
S and A settled the dispute between them on confidential terms, but agreed that S could pursue its appeal against the revocation order. As it was now an uncontested appeal, the Registrar of Trade Marks (Registrar) intervened to protect the public interest in invalid trade marks being restored to the register.
The court allowed the appeal. It held that S had proved that it had made genuine use of the wordless CTM.
Much of S’s use of the logo CTM constituted use of the wordless CTM. The evidence showed that the average consumer had perceived the wordless CTM as indicative of the origin of those goods and services. Much of this use was such that the differences between the logo CTM and the wordless CTM did not change the distinctive character of the wordless CTM. The wordless CTM had itself been seen as a trade mark and not simply as background.
There was unusually powerful evidence of S’s use of the logo CTM and of the average consumer’s perception, including that:
- S had made substantial use of the wordless CTM over many years.
- None of S’s competitors had a logo remotely similar to the logo CTM or the wordless CTM.
- There was a strong inference that A was well aware that the wordless CTM denoted S even with the words “ASDA Optician” written across it: A’s internal documents described A’s logo as a “rip off”, “highly recognisable” and “the Specsavers logo”. Given A’s understanding of the market and its knowledge of the average consumer, this was persuasive evidence of how the logo CTM was perceived.
- From a distance the word SPECSAVERS did not stand out from the logo CTM; it was the green overlapping ellipses that caught the eye.
The court rejected the Registrar’s submission that, as the High Court had found that the ellipses in the logo CTM and A’s logo did not lead to likelihood of confusion, it followed that the ellipses did not act as an indication of origin.
This was an unusual case where the evidence in support of genuine use was particularly strong. The court emphasised that each case must be decided on its own facts in the light of all relevant circumstances, and that, in general, it was unlikely that the background of a mark would be perceived by the average consumer as an indication of origin. This decision should not therefore open the floodgates of applications for commonplace wordless logo marks.
The court’s rejection of the argument that the first dismissal of a likelihood of confusion between the common element of the logo CTM and A’s logo meant that the ellipses did not act as an indication of origin is unsurprising since the tests for likelihood of confusion and establishing genuine use are different.
Case: Specsavers International Healthcare Ltd and others v Asda Stores Ltd  EWCA Civ 1294.
First published in the December 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200