FAQ

Specsavers; importance of registration of parts of a trademark

Specsavers is the largest optometrist chain in the United Kingdom. In 2009 Asda Stores (the competition) starts a campaign: “Be a ready specsaver at ASDA” using logos that are remarkably similar to those of Specsaver’s. As a consequence a legal procedure followed. Specsavers invoked the following trademark registrations: the wordmark, the logo and the shape of the glasses (without tekst in black and white). During the procedure the question arised whether this log is still valid since Specsavers only uses it in green accompanied by word elements. The black shape is not used separately, and the trademark is under obligation of use.

The European Court decides that the registration in black is fine. As long as its shape is perceived as a logo by the consumer, even i fit is used exclusively in combination with word elements, it fulfills the requirements for use. For many companies this is all the more reason to not only register a figurative trademark as a whole (with word elements) but also its distinctive characters separately. This may be crucial in cases of coat tail riding.

trademarks

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Trademark infringement, trademark issues and oppositions

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Cosmetics

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IP Quiz

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defendant

IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?

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