ECJ in Specsavers case: use of the trademark in a form different from that under which it was registered and relevance of color

With ruling of last 18 June in Case C-252/12, the European Court of Justice (“ECJ”) ruled again on genuine use of the trademark in a form different from that under which the trademark was registered, right after the recent decision on the same subject matter (in relation to the Levi’s label) that we talked about here on this blog.

In this case, proceedings were commenced because of an advertising campaign for optical products launched  by the English supermarkets chain Asda Stores Ltd (“Asda”) and targeting the Specsavers group, i.e. the largest opticians chain in the United Kingdom and Asda’s main competitor. In particular, the advertising campaign in issue used the slogans “Be a real spec saver at Asda” and “Spec savings at ASDA” (the “Slogans”), as well as two logos consisting of two ovals containing respectively the words “Asda” and “Opticians” (the “Asda Trademarks”, that you can see here within the text of the ruling).

In light of such initiative, Specsavers took legal action before the High Court of Justice (England and Wales) alleging infringement by the Slogans and the Asda Trademarks of its Community word trademarks “Specsavers” as well as of its Community figurative trademarks consisting, in one case, of two slightly overlapped ovals containing the word “Specsavers” inside, and, in the other case, of the same two ovals which however were “empty” this time, i.e. without any wording inside (the “Specsavers Trademarks”, that you can see here within the text of the ruling).

The High Court of Justice (England and Wales) denied the infringement by Asda of the Specsavers Trademarks, also revoking for non-use the figurative trademark Specsavers consisting of the two empty ovals, because it had not been put to genuine use within 5 years following registration as per Articles 15(1) paragraph 1 and 51(1)(a) of regulation no. 207/09 on the Community trademark (the “Regulation”). In particular, according to Asda’s defence accepted by the High Court, Specsavers never used the trademark in issue alone, but always together with the word trademark “Specsavers” superimposed over it; this, furthermore, coinciding with the combination of trademarks which was already registered as an independent figurative trademark (namely the one consisting of two ovals containing the word “Specsavers”).

Specsavers took the case before the Court of Appeal (England and Wales) which partially overturned the High Court decision holding that Specsavers had the right to prevent Asda from using the Slogans and the Asda Trademarks because they infringed the word marks “Specsavers” and the figurative trademarks consisting of the ovals containing the word “Specsavers”. However, the Court of Appeal also stayed the proceedings  in order to refer to the ECJ the preliminary questions settled in the ruling in issue, regarding  the other figurative trademark Specsavers which was enforced, i.e. the one consisting of only two empty ovals.

In this respect, the referring judge firstly asked whether the condition of genuine use of a Community trademark provided by the abovementioned articles 15(1) and 51(1) of the Regulation was fulfilled where a Community figurative mark is used only in conjunction with a word mark which is superimposed over it, in case the combination of those two marks is, furthermore, itself registered as a Community trademark. In the ruling under consideration, the ECJ, in line with the abovementioned decision in the Levi’s case, gives a positive answer, noting that a similar case falls within the scope of article 15(1) section 2 (a) of the Regulation: according to this provision, genuine use of the trademark is also given by the use of the same in a form differing from the one under which it was registered in some elements which do not alter its distinctive character, i.e. its capacity to “identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings”. In the present case, then, the use of the figurative mark consisting of the two ovals with the “Specsavers” word mark superimposed over it may be considered to be genuine use of the mark consisting of the only two empty ovals “to the extent that that mark as it was registered, namely without a part of it being hidden by the superimposed word sign «Specsavers», always refers in that form to the goods of the Specsavers group covered by registration”. This assessment is clearly to be carried out by the referring judge. To the aim of this assessment – the Court affirms – it is in any case of no importance the fact that the word mark “Specsvers” and the compound trademark given by the ovals with the word mark superimposed are  theirselves registered as Community trademarks. Among other things, the ECJ reached such conclusion by recalling mutatis mutandis the arguments of the rulings already issued in cases C-553/11 and C-12/12 for similar matters (we already talked about them here on this blog) as well as by noting that the ratio of the provisions under consideration is to “allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned”.

After clarifying the above, the ECJ ruled on the other questions raised by the referring judge who noted that – even if the Specsavers figurative marks were registered in black and white – both Specsavers and Asda actually used their respective signs in green. In light of that, the judge asked whether, where a Community trademark is not registered in color, but the proprietor uses it extensively in a particular color so that it is associated in the mind of a significant portion of the public with that color, the color which a third party uses in order to represent a sign alleged to infringe that trademark is relevant in the global assessment of the likelihood of confusion or unfair advantage required to have a trademark infringed pursuant, respectively, to letters (b) and (c) of article 9(1) of the Regulation (according to this provision, in fact, the proprietor of a Community trademark is entitled to prevent any third party from using in the course of trade: “a) any sign which is identical with the Community trademark in relation to goods or services which are identical with those for which the Community trade mark is registered; b) any sign where, because of its identity with, or similarity to, the Community trademark and the identity or similarity of the goods or services covered by the Community trademark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark; c) any sign which is identical with, or similar to, the Community trademark in relation to goods or services which are not similar to those for which the Community trademark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trademark”).

In response to this question, with the present ruling the ECJ confirms that the color in which the trademark is effectively used affects how the average consumer perceives that trademark, it being therefore an element “liable to increase the likelihood of confusion or association between the earlier trademark and the sign alleged to infringe it”, despite the fact that the prior mark was registered in black and white. In addition, the use of the same color “is a factor which must be taken into account in order to ascertain whether it can be held that unfair advantage is being taken of the distinctive character or reputation of the trademark”.

In light of this answer, the ECJ was finally asked to say whether the fact that the third party making use of a sign which allegedly infringes the registered trademark is itself associated, in the mind of a significant portion of the public, with the color in issue is relevant to the assessment of the abovementioned likelihood of confusion and unfair advantage (as happened to Asda which normally used its logos in green). According to the Court, this factor too is likely to affect how the public perceives the signs in issue and could result in a reduction of the likelihood of confusion between the marks to the extent that  – as regards the present case – the relevant public perceives the color green of Asda logos as the one normally used by Asda. However, this assessment too is of course up to the referring judge. As regards unfair advantage, the ECJ holds that the circumstance in issue “can be relevant to determining whether the use of that sign has a «due cause»” which would exclude trademark infringement pursuant to abovementioned article 9(1)(c), what is to be verified again by the referring judge.