Specssavers should’ve been told they’ve gone too far

Specsavers have always been pro-active when seeking to register and protect their intellectual property. They are in the news again, not for their trade mark dispute with Asda, but in relation to their latest trade mark application simply covering the short phrase “should’ve.”

Specsavers already have trade marks for their well known slogan ‘should’ve gone to Specsavers’, but they have moved to strengthen their position by registering the shorter phrase. A registration of such a sign would not normally be granted, but Specsavers must have relying on their long standing use of the word as part of their advertising slogan to show that they have established an association between the phrase and the company.

The application has now been published, so Specsavers must have satisfied the IPO that the proposed trade mark can be used to distinguish their products from their competitors. However, it is difficult accept that the association rests in “should’ve” alone rather than than the complete phrase ‘Should’ve gone to”.

There still remains the opposition period to navigate, though it is unlikely any third party will volunteer to challenge the trade mark with out any interest in the word at this time. Any challenge to any registration is likely to come further down the line if Specsavers seek to enforce the trade mark. I would therefore expect Specsavers to be circumspect about relying on this trade mark (as opposed to their other registrations) when alleging infringement, especially if the infringer has the financial clout to bring a case for revocation before the courts.

Optician group Specsavers has had its plan to trademark the use of “should’ve” and “shouldve” approved by the UK Intellectual Property Office (IPO).

http://www.bbc.co.uk/news/business-37092366