Friday, 4 October 2013

Darren Olivier

Could Specsavers mean TM savings?

Reading through this month's edition of the increasingly bulky World Trademark Review, Afro Leo was drawn to the discussion by RPC's Jeremy Drew and Ben Mark of the recent Court of Justice of the European Union (CJEU) decision involving Specsavers International (not to be confused with the local shop having the same name) and Asda Stores. IPKat has a good piece on the decision here.

One of the findings of the CJEU was that where a mark that is registered in black & white but used in a colour combination that is associated in the minds of the public with the proprietor of the mark (as is the case with the Specsavers mark), that colour combination is relevant for determining whether a likelihood of confusion takes place. In other words, relevant in deciding infringement or whether a mark should be successfully opposed. Why this question was put to the Court will be relevant if you consider some of the marks in issue below:

registered mark
Asda's mark                              

mark in use

The effect of the decision, as noted by Drew and Mark, is that "brand owners [will] continue to benefit from the broad protection afforded to logos registered in black and white, but now they will also benefit from the enhanced distinctiveness of a particular colour through use without the need to register the logo in that colour".

Although Afro Leo would recommend to any proprietor to file for logos in colour or with claims to colour where colour is important, he does recognise that this can become an expensive exercise. Consequently, the decision is also good news for African proprietors (eg RSA's wine industry labels) who typically find European trade marks quite costly at current exchange rates. However, the decision, also bodes well for brand owners protecting their trade marks locally.

Under local practice there has been some confusion owing to the fact that a mark can be filed in black and white and protect all colour combinations (as in Europe), in colour (with no colour endorsement) and in colour with a specific endorsement that a particular colour or colour combination is an integral part of the mark. This has meant that it is unclear what the scope of the protection of the colour marks is.

In addition, local practice has not been to file evidence of use of the registered trade mark (to show enhanced distinctiveness or protection in a colour) when claiming infringement, due to a belief that such evidence was only relevant in passing off proceedings.

Afro Leo has already expressed his view in these posts here and here, that evidence of use is relevant for infringement and opposition proceedings because the European approach to the infringement/opposition test outlined in Sabel V Puma has been adopted by our Courts. He feels that it is a matter of time before we see oppositions and infringement claims not based on passing off, including evidence of use. However, it follows then that the Specsavers decision is also likely to be good news for local brand owners with colour marks and a limited filing budget. As always, your thoughts appreciated.

Darren Olivier

Darren Olivier

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