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.


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MENTOS has been selling chewing gum under the name MENTOS PURE FRESH for several years. In order to protect her rights MENTOS has registered the following trademarks: the logo MENTOS PURE FRESH, the logo MENTOS PURE FRESH 3 and a figurative depiction of the word PURE. Defendant sells chewing gum under the trademark DENTYNE PURE and has registered its logo as a trademark. Infringement or not?
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