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Use of a mark – the insight provided by Specsavers


One of the most important UK trade mark decisions of recent years is Specsavers & Ors v Asda Stores [2014] EWCA Civ1294. This was a battle royale between an optician and spectacles supplier, Specsavers, and one of the large UK supermarket chains, Asda, which is owned by Walmart. Many issues were raised during the proceedings but this note focuses on what was decided regarding use of the mark sufficient to support a registration of the mark.

From UK and Community jurisprudence, the following general rules as to what qualifies as use can be derived:

  • All relevant facts and circumstances must be taken into account;
  • Use need not always be quantitively significant; no de minimis rule applies;
  • Assessment entails a degree of interdependence between factors.

The proceedings in question concerned, amongst other things, Specsavers’ registration of the mark set out below:

af specsavers wordless mark

termed the ‘wordless logo mark’ in the proceedings.

What Specsavers had used, however, was:

af specsavers mark

termed the ‘shaded logo mark’ in the proceedings.

UK and Community Trade Mark law provides that it is not necessary to use a mark in the form registered as long as use does not affect the distinctive character of the mark. This recognises that brands need to be able to develop going forwards.

Asda obviously argued that the colour of the mark in use plus the fact that it includes the word element “Specsavers” meant that it was distinctly different from the mark as registered. However, the UK Court of Appeal found that this was not the case. In the decision it was stated that “the differences between the shaded logo mark and the wordless logo mark have not changed the distinctive character of the wordless logo mark and the wordless logo mark has itself been seen as a trade mark”.

The court was apparently influenced by the following facts:

  • the extensive use of the shaded logo mark;
  • that both marks were quite different in design from any other logo used by competitors;
  • that Asda’s starting point was the wordless logo mark from which it sought to move a safe distance;
  • that customers recognise the green overlapping ellipses outside stores as denoting Specsavers from a distance, particularly taxi drivers.

The last fact is rather interesting although obviously expensive to prove. A number of old UK trade mark decisions referred to ‘the man on the Clapham Omnibus’. It seems that this may now have been replaced by ‘the man in the black cab’.

The decision shows that it is possible to move some way from a registered mark but still maintain validity of the Registration. However, it is clearly important always carefully to review what is registered and what is actually in use. The trade mark team at Reddie & Grose is always happy to help with such portfolio reviews.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

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