High Street opticians, Specsavers have successfully applied to trademark the abbreviated word ‘should’ve’ and single word ‘shouldve’. These relate to Specsavers’ iconic phrase ‘should’ve gone to Specsavers’.
The Intellectual Property Office’s (‘IPO’) decision to grant the application is surprising, given that the registration of single commonly used words or phrases is notoriously difficult. As trade mark registration allows businesses to obtain a monopoly over the protected word or phrase, the IPO is rightly cautious to allow one entity the right to use commonplace or descriptive words – to the exclusion (and potential disadvantage) of their competitors.
Short phrases which are used in marketing campaigns and comprise commonplace or descriptive words have been successfully registered by numerous businesses, for example Nestlé, Nike and Apple have been successful in respect of their slogans ‘Have a Break’, ‘Just Do It’ and ‘Think Different’ respectively.
Carlsberg’s application for the trade mark ‘probably’ is the closest example of the IPO’s willingness to grant trade mark applications in respect of single commonplace words. This was registered by Carlsberg in relation to beer and related alcohol products only. Specsavers’ registration has a wider remit as it has applied for registration in five classes, including stationery and retail services as well as optician services and apparatus.
Competitors have until 12 October 2016 to object to Specsavers’ application. It will be interesting to see if any objections are filed and if so on what grounds.
If Specsavers’ trade marks are successfully registered, more brand owners may consider applying to register trade marks for single words which feature prominently in their advertising campaigns. The IPO has indicated that applications in respect of common words may be granted where the word is linked to the applicant through ‘use’ or ‘association’, although the exact threshold of ‘use’ or ‘association’ which would enable a single word / phrase application to be successful has not been defined.
We will keep you updated on Specsavers’ application.
For more information please contact Charlotte Bolton, Associate in our Litigation & Regulatory Disputes team on charlotte.bolton@michelmores.com or 01392 687745
