Case C-252/12, Specsavers – seeing trade marks green with envy? [judgment 2013, ECLI:EU:C:2013:497]

For the purposes of the Community trade mark Regulation 207/2009, where a trade mark does not claim a colour but the proprietor uses a particular colour, is that relevant to assessing the likelihood of ‘confusion’ when the defendant also uses the colour in the sign complained of? And can the proprietor also claim that a trade mark is being genuinely used by combining separately registered figurative and word marks?

Facts
The claimants, Specsavers, is the UK’s largest chain of opticians. Its business logo has the word ‘Specsavers’ written across two overlapping dark green ovals.

The defendants, Asda, operate a chain of supermarkets. Some of its stores also have opticians in them. In 2009, Asda organised a marketing campaign designed to relaunch its optical business. It was a campaign conducted through the media of newspaper adverts, posters, and the internet. The advertising campaign used a logo comprising of two abutting, not overlapping, white ovals together with the words ‘ASDA’ and ‘Opticians’ written across them in light green – the same colour green also being used as the background colour to the white abutting ovals. The specific hue of light green common to both the lettering and the background was that used by Asda in connection with its business.

Specsavers, however, brought an action against the defendants alleging that Asda’s logo infringed Specsavers’ trade marks under Article 9(1)(b) and 9(1)(c) of the Community trade mark Regulation 207/2009 (which codifies Council Regulation 40/94).

In October 2010, a High Court judge declared some aspects of Asda’s marketing campaign not to infringe Specsaver’s trademarks. Indeed, the judge found one of Specsaver’s trade marks invalid for non use. However, the High Court’s judgment was appealed.

The Wordless Logo
In 2012, Lord Justice Kitchin, an IP law specialist, handed down the leading judgment of the Court of Appeal. However, in respect of one of Specsaver’s trade marks, he felt that a reference to the CJEU was required. It was a trade mark which was comprised of the Specsaver’s logo of two overlapping ovals in a single block black colour, but this trade mark did not mention the word Specsavers in it. This mark was dubbed the ‘Wordless logo’.

One of the initial difficulties to approaching this dispute surrounding the Wordless logo was understanding the EU law which was to apply in relation to colour, and more specifically, where a colour had not been claimed. For whereas the Court of First Instance in T-129/00 Procter & Gamble Co had discussed some aspects of ‘colour’, when that dispute came to be appealed to the Court of Justice, the Court of Justice did not deal with the issue at all.

Lord Justice Kitchin therefore explained his view on the matter and justified it with this legal reasoning. The Court of Appeal in Phones 4u Ltd (2006) had already held that a mark registered in black and white was registered in all colours – such a situation being ‘markedly different’ from the cloud images in L’Oreal which did not form any part of the registered mark.

Further, in Case C-39/97, Canon Kabushiki Kaisha the CJEU had explained that an earlier mark’s reputation was to be taken into account when determining the likelihood of confusion. The more distinctive the earlier mark, the greater the risk of confusion. And marks with a highly distinctive character enjoyed broader protection than those with a less distinctive character.

In accordance with Case C-251/95 Sabel BV, account must be taken of the visual, aural and conceptual similarity of the marks, which includes the overall impression given by the marks, and their respective distinctive and dominant components.

Therefore, Kitchin LJ felt that if, as here, a logo was registered in black and white and which has acquired, through use, a particular and distinctive character in the colour green, then this should be taken into account in the global appreciation analysis. However, the situation before him was also slightly different to that which had existed in T-129/00 Procter & Gamble. Here the issue was whether, through use, the mark had gained enhanced distinctiveness as a whole or in one or more of its components, and Kitchin LJ  felt that there was no reason why those components should not include colour.

Use of a trade mark through combination?
A second issue on which the Court of Appeal sought guidance from the CJEU concerned the interpretation of Article 15 of the trade mark Regulation which requires a trade mark to be put to genuine use.

At first instance, Asda had sought to have Specsaver’s ‘Wordless logo’ mark revoked for lack of use. Specsavers responded with the submission that it was indeed using the Wordless logo mark but it was doing so through using another of its trade marks, the so-called ‘Shaded logo mark’. This Shaded logo mark had the word ‘Specsavers’ written across it. It was an unsuccessful submission before the judge at first instance. The judge at first instance had decided that to the average consumer, the addition of the word ‘Specsavers’ had changed the distinctive character of the Wordless mark so no reliance could be placed on the Shaded logo marks.

On appeal, Specsavers claimed that the Wordless logo mark had in fact been used. It based its submission on Case C-353/03, Société des produits Nestlé SA. In that case, the phrase ‘HAVE A BREAK’ was held to be devoid of distinctive character and so registration would be secured only if distinctive character had been acquired through use. The problem in that case was that HAVE A BREAK formed only part of the registered mark, which was ‘HAVE A BREAK … HAVE A KIT KAT’. Nevertheless, the CJEU subsequently went on to allow that a distinctive character could be acquired as a result of the use of the mark, as part of, or in conjunction, with another mark.

As such, Kitchin LJ felt if a mark’s component could confer a distinctive character on that component capable of justifying its registration, then this could arguably constitute ‘use’ for the purposes of Article 15 of the Regulation. However, EU law on that possibility was not altogether clear. For whereas the use of different trade marks together had been an issue discussed by the Court of First Instance in Case T-29/04 Castellblanch, the point about the non-use of a mark had not been discussed by the Court of Justice. Furthermore, he felt that the case law of the EU’s General Court was not entirely consistent with that of the Court of Justice’s reasoning in the Nestle ‘Kit Kat’ case, or indeed the reasoning used in Case C-234/06P, Il Ponte Finanziaria. Thus, Kitchin LJ sought the guidance of the Court of Justice as to the correct approach towards Article 15 of the Regulation, where a trade mark proprietor was seeking to establish use of a trade mark on the basis of the use of that mark in conjunction with another element.

Questions Referred
According to the BAILII website, the Court of Appeal of England and Wales (Civil Division) asked:

A. Where a trader has separate registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?

B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?

C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?

D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?

E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?

Update
The case is due to be heard by the Third Chamber on 20 March 2013.

Issues of ‘use’ and composite marks arise in a recent reference from the German Supreme Court, see further: Case C-12/12, Colloseum Holding – red flagging jeans, use and composite marks in trade mark law.