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Is there now any difference between trade mark infringement and passing off?
In mid-July the Court of Justice of the EU (CJEU) gave its decision in the Specsavers and Asda trademark case, following the Court of Appeal’s (CoA) judgment in January 2012.
The CoA had said it was unclear whether the judge at first instance had been wrong in his consideration of the colours used by the parties for their marks so the CJEU needed to be consulted on whether it was permissible to take into account the enhanced reputation enjoyed by Specsavers in the colour green. The CoA also referred questions relating to whether Asda’s logo infringed Specsavers’ CTM registration for its wordless (overlapping ovals) logo.
The CJEU’s answers to the five questions referred can be divided into two main issues; first, whether the use of a combined logo formed of a separately registered wordless mark and a registered word mark can amount to genuine use of the registered wordless mark.
The CJEU confirmed this will be genuine use if the national court determines that the superimposition of a word mark does not change the distinctive character of a wordless mark. In other words, do consumers still perceive it as a trade mark in its own right, designating that goods or services originate from, in this case, Specsavers?
This will give some comfort to brand owners wondering whether to register their marks in the combinations used and in a range of possible colours to defeat non-use attack.
But the question remains, has the combination mark, as used, altered the distinctiveness of the (uncombined) registered mark relied upon?
The second main issue concerned the assessment of infringement where, as here, the claimant’s mark is registered in black and white, but the claimant and defendant have each used their marks extensively in a particular colour so their marks have become associated with that colour in the minds of a significant proportion of consumers.
The CJEU confirmed that the colour associated by consumers with the defendant’s mark is relevant for the purposes of both likelihood of confusion and unfair advantage.
This extends earlier CJEU guidance on the global assessment for infringement.
The implications could be significant because until now the association or reputation in consumers’ minds of the defendant’s mark arising from its (allegedly infringing) use has generally been disregarded for infringement purposes. This ruling appears to open the door to other arguments, not limited to the use of colour.
We learned from the O2 Holdings case that the context of the defendant’s use was important and the CoA in Specsavers acknowledged that the approach conventionally followed in the UK was incorrect.
Now the CJEU has confirmed that associations made by consumers arising from use of ‘house colours’ by both sides can also play a part in assessment of infringement, one wonders whether there is any substantial difference between registered trademark infringement and passing off.