Amicus Brief

Specsavers International Healthcare Limited & others v. Asda Stores Limited

Published: July 18, 2013

Court

Court of Justice of the EU

Our Position

Community Trade Mark registrations for graphic device marks and word marks can be used in combination for the purposes of Articles 15 and 51 of the CTMR. It does not make a difference if: (i) the word mark is superimposed over the graphic device; or (ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark. Where a Community trade mark is not registered in color, but the proprietor has used it extensively in a particular color or combination of colors 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 color or combination of colors, such color or colors are relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) and (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94. Finally, it is also relevant that as part of the global assessment the defendant itself is associated in the mind of a significant portion of the public with the color or particular combination of colors which it is using for the sign in question.

Outcome

The CJEU agreed with all of INTA’s positions. The case will now return to the UK Court of Appeal (England & Wales) (Civil Division) to be decided in accordance with the CJEU ruling.

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