Specsavers' Controversial Trade Mark Approved

Specsavers Optical Group Ltd (Specsavers) has received initial approval from the UK Intellectual Property Office (UKIPO) on the registration of "should've" and "shoudve" as UK trademarks, being a key part of its marketing slogan "Shoud've gone to Specsavers". The marks have been published by UKIPO and any party can oppose the registration during the opposition period which ends on 12 October 2016.

Specsavers, as many will know, is a British retail chain and it operates on a global scale providing optical services and contact lenses, for example, and more recently hearing aids. The Group has a history of enforcing its intellectual property rights, and was successful in a high profile trade mark claim against Asda in 2014 relating to infringement of a trademark for its logo.

Trade marks convey a powerful monopoly and historically law-makers have been reluctant to restrict free-use of the English language by registering trade marks for common words. However, where a business has generated significant goodwill or reputation for a slogan that may be registrable as a trademark despite objectively being a mark that simply consists of a form of common language, An example of another business which successfully registered a similar mark is Nestle, which registered "Have a Break" for its Kit Kats.

The reason the current registration is an interesting one is that it incorporates a single common word, or single commonly used combination of words, used in the English language. Typically, such words would not be eligible for registration as a trade mark, because they are generic and so likely to lack distinctiveness. In this case, the mark has gained a significant reputation and a large proportion of the public in the UK would recognise Specsavers' slogan, so the mark is more distinctive. This is likely to have impacted the UKIPO's decision to publish the mark for the opposition period.

If there are no oppositions, Specsavers may be able to prevent businesses from using the phrase "shoud've" or "shoudve" when referring to certain goods (dictated by the classes in which the trademark is registered), in this case including eyewear and medical hearing aids.

It will be interesting to see if any oppositions are filed, and indeed to follow further commentary on this development. If you have any queries on this please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.