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Should the UK IPO have allowed the Specsavers’ ‘should’ve’ trademark?

23-08-2016

News that the UK’s Intellectual Property Office (IPO) had approved the application by British optician Specsavers to trademark the words ‘should’ve’ and ‘shouldve’ raised eyebrows in the British media last week. Will the surprise decision open the door for other common terms to be registered as trademarks?

While the phrase ‘Should’ve gone to Specsavers’ is a key tagline in the optician’s advertising campaigns, the words ‘should’ve’ would not normally fulfil the criteria for approval as a trademark. Trademark offices usually also shy away from approving such common wording, given that a trademark provides its owner with the right to exclude others from using the protected wording in the relevant class of goods and/or services.

Novagraaf’s Nora Fowler comments: “The fact that the UK IPO has accepted Specsavers’ trademark application for ‘should’ve’ and ‘shouldve’, especially for a relatively broad range of goods and services (covering not only optical apparatus and opticians services, but also paper and printed matter), is quite surprising. Although ‘should’ve’ is not descriptive of the goods and services in the application, it is a very generic term which is, arguably, not distinctive (the main requirement for trademark registrability) and, therefore, would not inform consumers that the goods and services originate from Specsavers as opposed to any other company.”

Trademarks: the distinctiveness requirement
In general, the most distinctive type of word marks are those that are completely made-up and had no real meaning at the time of registration (for example, Adidas, Haagen-Dazs or Danone). Common words can also be considered distinctive, so long as they are used in relation to goods and services which are not related to the dictionary meaning of the word (e.g. Apple in relation to computers rather than fruit). However, the marks must still fulfill the main purpose of distinguishing one company’s goods and/of services from those of another. “This is what makes the allowance of the ‘should’ve/shouldve’ application so surprising,” adds Nora, “as it is hard to see how this word is capable of fulfilling this requirement.” 

Acquiring distinctiveness
It is possible to obtain a registration of a trademark which is not inherently distinctive by showing that the mark has acquired distinctiveness through a large amount of use in the market. Although Specsavers has used the slogan ‘Should’ve gone to Specsavers’ (which is also a registered trademark) extensively, does this use really lead to acquired distinctiveness of the term ‘should’ve’ on its own?

As seen in the ‘Have a break…’ Kit Kat case, a mark can acquire distinctiveness through use as part of a registered trademark, explains Nora (in this case: ‘Should’ve gone to Specsavers’): “However, consumers would have to have come to understand that ‘should’ve’ (on its own) designates goods and services originating from Specsavers.”

She adds: “A similar case is that of the ‘Probably’ trademark registration owned by brewery Carlsberg. In contrast to the should’ve/shouldve application, however, this UK registration protects only a very narrow range of goods, namely, beer and lager, so gives Carlsberg a much narrower monopoly on the word.”

What happens next?
The application has now been published for opposition purposes. In other words, third parties have two months to oppose the application on the basis of an earlier right which is confusingly similar to the application, or on the basis of absolute grounds (e.g. that the mark is non-distinctive and should be free for everyone in that line of trade to use). According to the UK IPO website, a relatively large number of notices of threatened opposition appear already to have been filed.

For more advice on registering trademarks, speak to your Novagraaf attorney or contact us.

Nora Fowler is a trademark attorney in the London offices of Novagraaf