Specsavers — missing words and black and white marks

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By Roland Mallinson

The Court of Justice of the European Union (CJEU) has ruled in the Specsavers v Asda case that, where a CTM device mark is only used in combination with another element — for example adorned with a word — such use can still amount to genuine use of the unadorned device mark. This applies, however, only if the adorning element does not change the distinctive character of the CTM device mark. The CJEU added that is makes no difference if the combination mark (device and adorning element) is separately registered.

In the context of the Specsavers case, the Court of Appeal now has to decide if use of the device mark with ‘Specsavers’ is genuine use of the wordless mark or if the addition of ‘Specsavers’ changes the distinctive character of wordless mark. The High Court had said it was not genuine use of the wordless mark…

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