If a mere figurative mark in black and white is registered, does trade-mark protection still apply if the mark is being combined with a word? And what if it is used in (a different) colour? The Court of Justice took a position on a number of issues relating to figurative trade marks.
How best to register a figurative mark? The Court of Justice dealt with some interesting aspects of this question in a dispute between an English supermarket (Asda) and an English optical retailer (Specsavers) (Court of Justice 18 July 2013, case C-252/12). Asda had launched a campaign with the slogan "Be a real spec saver at Asda" and logos that were similar to those of Specsavers, but with the word "Asda opticians" on it. Specsavers initiated legal proceedings but encountered a legal obstacle on the basis of its own trade mark rights. The European Court of Justice was asked, once again, for guidelines.
The first question concerned the validity of the figurative trade mark of Specsavers, which was presented as a pure image but, in practice, was always used in conjunction with a word superimposed over it. Seeking revocation of the trade mark, Asda argued that the figurative mark was being used in a form which was different from the form in which it had been registered. Accordingly, Asda argued, the trade mark should be revoked due to the absence of genuine use. The Court's reasoning was subtle: the trade mark is genuinely used and valid if and to the extent that Specsavers can demonstrate that the figurative mark retains an independent distinctive role in the overall design of word and mark and refers to the goods or services for which registration was requested.
The next problem was that the figurative mark was registered in black and white, whereas Specsavers had always used the colour green to represent it. This was of great importance, as Asda also used green colours in its similar logo. The Court ruled that, despite the fact that the mark was registered in black and white, the use of green had to be taken into account, since Specsavers argued that it had always used this colour to represent its mark, as a result of which a significant portion of the public associates the colour green with the mark.
This was not the end of the story for Specsavers. Before the dispute between the two parties arose, Asda had already been using the colour green in its similar logo and was therefore associated with the colour green by a significant portion of the public. This fact will have to be taken into account by the national court in its assessment of risk of confusion and trade mark violation.
With this guidance, the English court will have to settle the matter. For now, the judgment of the European Court of Justice shows us that the registration of parts of marks and marks in black and white leads to more disputes and a higher burden of proof for the holder. Therefore, registration in colour is perhaps often preferable.