Case C-252/12

Specsavers International Healthcare Ltd and Others

v

Asda Stores Ltd

(Request for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division))

‛Trade marks — Regulation (EC) No 207/2009 — Articles 9(1)(b) and (c), 15(1) and 51(1)(a) — Grounds for revocation — Definition of ‘genuine use’ — Trade mark used together with another trade mark or as part of a ‘compound trade mark’ — Colour or combination of colours in which a trade mark is used — Reputation’

Summary — Judgment of the Court (Third Chamber), 18 July 2013

Community trade mark — Surrender, revocation and invalidity — Grounds for revocation — Absence of genuine use of a trade mark — Use of the mark in a form which differs through factors not altering the distinctive character of the mark — Figurative mark used together with a word mark superimposed over it (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a)) Community trade mark — Effects of the Community trade mark — Rights conferred by a trade mark — Right to prohibit the use of the trade mark — Global assessment of the likelihood of confusion or unfair advantage — Use of a trade mark, which has not been registered in colour, in a colour or combination of specific colours by the proprietor of the mark — Relevance of the colours used by a third party in order to represent a sign alleged to infringe the trade mark (Council Regulation No 207/2009, Art. 9(1)(b) and (c)) Community trade mark — Effects of the Community trade mark — Rights conferred by a trade mark — Right to prohibit the use of the trade mark — Global assessment of the likelihood of confusion or unfair advantage — Third party making use of a sign alleged to infringe the trade mar which is itself associated with the colour or combination of specific colours used to represent the sign — Relevance (Council Regulation No 207/2009, Art. 9(1)(b) and (c))

Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 on the Community trade mark must be interpreted as meaning that the condition of ‘genuine use’, within the meaning of those provisions, may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered. (see para. 31, operative part 1) Article 9(1)(b) and (c) of Regulation No 207/2009 on the Community trade mark must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision. (see para. 41, operative part 2) Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that the fact that the third party making use of a sign which allegedly infringes the registered trade mark is itself associated, in the mind of a significant portion of the public, with the colour or particular combination of colours which it uses for the representation of that sign is relevant to the global assessment of the likelihood of confusion and unfair advantage for the purposes of that provision. (see para. 50, operative part 3)

Case C-252/12

Specsavers International Healthcare Ltd and Others

v

Asda Stores Ltd

(Request for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division))

‛Trade marks — Regulation (EC) No 207/2009 — Articles 9(1)(b) and (c), 15(1) and 51(1)(a) — Grounds for revocation — Definition of ‘genuine use’ — Trade mark used together with another trade mark or as part of a ‘compound trade mark’ — Colour or combination of colours in which a trade mark is used — Reputation’

Summary — Judgment of the Court (Third Chamber), 18 July 2013

Community trade mark — Surrender, revocation and invalidity — Grounds for revocation — Absence of genuine use of a trade mark — Use of the mark in a form which differs through factors not altering the distinctive character of the mark — Figurative mark used together with a word mark superimposed over it (Council Regulation No 207/2009, Arts 15(1) and 51(1)(a)) Community trade mark — Effects of the Community trade mark — Rights conferred by a trade mark — Right to prohibit the use of the trade mark — Global assessment of the likelihood of confusion or unfair advantage — Use of a trade mark, which has not been registered in colour, in a colour or combination of specific colours by the proprietor of the mark — Relevance of the colours used by a third party in order to represent a sign alleged to infringe the trade mark (Council Regulation No 207/2009, Art. 9(1)(b) and (c)) Community trade mark — Effects of the Community trade mark — Rights conferred by a trade mark — Right to prohibit the use of the trade mark — Global assessment of the likelihood of confusion or unfair advantage — Third party making use of a sign alleged to infringe the trade mar which is itself associated with the colour or combination of specific colours used to represent the sign — Relevance (Council Regulation No 207/2009, Art. 9(1)(b) and (c))