Should’ve or shouldn’t’ve? Specsavers’ new trade mark causes a stir

Written by Jim Dennis, Matthew Hiscox

Many retailers will be concerned by the recent acceptance by the UK Trade Marks Registry of the trade mark application SHOULD’VE by Specsavers B.V., which was lodged to strengthen the protection of its well-known strapline “Should’ve gone to Specsavers” within the marketplace and on social media.  The mark was lodged on 18 July 2016 and appears to have progressed relatively quickly to advertisement.

Generic and commonplace words are normally unregistrable under trade mark law because they are not capable of distinguishing one person’s goods from another. However, it is not unheard of. In 1993 Carlsberg successfully applied to register the word PROBABLY as a trade mark for lager.

In order to obtain a registration for a generic mark of this nature, it is usually necessary for a trade mark to have acquired distinctiveness through use and for the applicant to evidence this to the Registry. Recently, for example, we persuaded the UK Registry to accept JERSEY PEARL in respect of pearls, by showing use over a 25 year period.

Although Specsavers can clearly show use of its full strapline “Should’ve gone to Specsavers” over a number of years, the question here is whether the average consumer would automatically associate the phrase SHOULD’VE with Specsavers within the fields of optics or audiology.

Based on the “Probably” precedent the UKIPO’s acceptance of a majority of this application would be just about understandable, as the mark is largely restricted to the optics and audiology fields, had it been subject to supporting evidence of acquired distinctiveness through use. However, it appears not to have been.

Worse still, the UKIPO has allowed the mark in class 16 for printed matter, publications and books (among other things).  This class has not been restricted to a specific field and it is hard to believe that Specsavers would be able to evidence acquired distinctiveness within this class without limiting protection of the goods to the optics and audiology fields.

Given Specsavers’ history of aggressively enforcing their trade marks (eg their recent litigation marathon against ASDA concerning the overlapping ovals), it may worry retailers that Specsavers could obtain a seemingly unfair advantage in the marketplace by preventing third parties (who are not necessarily competitors) from using a relatively generic phrase in trade. The mere threat of litigation from an organisation of Specsavers’ size is often a sufficient deterrent. It would be somewhat naïve to pretend that Specsavers won’t try to prevent innocent marketing usage of the phrase “should’ve” if they are granted a registration.

Third parties have until 12 October 2016 to either lodge an opposition or observations.  The application has already attracted two notices of threatened opposition in the first week of advertisement, so this case is far from over.

Jim Dennis is a partner and Matthew Hiscox a trade mark manager in the IP, Media & Technology team.

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Jim Dennis

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