## Facts

- Specsavers companies owned Community trade marks for the word mark “SPECSAVERS,” logo marks featuring “SPECSAVERS” within overlapping ovals, and a “wordless” mark of overlapping ovals; several registrations did not claim any specific color.
- Specsavers commonly used its overlapping-oval branding in a green color scheme in the marketplace.
- Asda, a supermarket chain offering optical services, ran comparative advertising using phrases such as “Be a real spec saver at Asda” and “Spec savings at Asda.”
- Asda’s campaign also used a logo of abutting/overlapping ovals containing “ASDA Opticians,” presented in a green/white scheme said to resemble Specsavers’ get-up.
- In UK proceedings, the High Court largely rejected Specsavers’ infringement claims and revoked the wordless mark for non-use.
- The Court of Appeal made a preliminary reference to the Court of Justice of the European Union (CJEU) on interpretation of the Community Trade Mark Regulation; the CJEU addressed EU-law questions but did not decide infringement on the facts.

## Issues

1. Whether use of a registered mark only as part of a composite sign or alongside another mark can constitute “genuine use” sufficient to avoid revocation for non-use.
2. Whether consistent use of a particular color for a figurative mark registered without a color claim can be considered (a) for genuine use and (b) for likelihood of confusion analysis.
3. Whether, for a reputed mark registered without a color claim, reputation acquired in a specific color or color combination can be considered when assessing a “link” and unfair advantage/detriment.

## Decision

- Use of a registered mark solely within a composite sign or together with another mark can constitute genuine use, if the registered mark remains perceived as indicating origin and the differences do not alter its distinctive character.
- For a figurative mark registered without color limitation, consistent use in a specific color may count as genuine use of the registered mark.
- The color actually used may be considered when assessing likelihood of confusion.
- For a mark with a reputation registered without color limitation, reputation acquired in a particular color or color combination may be considered when assessing whether the later sign creates a “link” and whether it takes unfair advantage of, or is detrimental to, the earlier mark’s distinctive character or repute.
- The CJEU left application to the national court, including whether Asda’s conduct infringed under the clarified standards.

## Legal Principles

- “Genuine use” does not require use in the exact registered form; use in a form differing in non-distinctive elements is sufficient if the distinctive character of the registered mark is unchanged.
- A mark can be genuinely used even when it appears only within a composite presentation, so long as consumers still perceive the registered mark itself as a badge of origin.
- For color-neutral figurative registrations, marketplace use in a consistent color can be relevant to (a) proving genuine use and (b) evaluating similarity and confusion based on the overall impression of the signs as used.
- For reputed marks, reputation developed in a particular color configuration may be relevant to the “link” analysis and to determining unfair advantage or detriment, even if the registration does not claim color.

## Conclusion

The CJEU clarified that composite use can preserve a registered mark through genuine use, and that actual color use and color-based reputation may be considered in confusion and reputed-mark analyses for registrations that are not limited to any color, with the ultimate infringement determination reserved for the referring national court.


Specsavers Int’l Healthcare Ltd. v. Asda Stores Ltd., Case C-252/12 (C.J.E.U. 2013)