The UK’s Intellectual Property Office (“IPO”) has approved Specsavers’ application to trademark the terms “should’ve” and “shouldve” to protect its well-known catchphrase., Specsavers had filed an application with the “IPO seeking a trademark over the two words ‘should’ve’ and ‘shouldve’ which the company has been regularly using as part of their slogan campaign “Should’ve gone to Specsavers”.
A trademark can take the form of a logo or symbol, a label, a slogan, a jingle or could relate to the packaging of a product.
The successful registration of a trademark provides its owner with the exclusive rights over the use of a trademark contained within the application, however, the exclusive right of use and the protection afforded by the trademark will be limited in its extent.
A trademark does not provide a monopoly power to the applicant as the application has to state which goods and services the trademark will receive protection under. For example, Tiffany has successfully trademarked the colour ‘Robin’s Egg blue’ which is synonymous with Tiffany’s packaging. This trademark is only applicable in relation to goods or services that could be confused as being goods or products made and sold by Tiffany, making a commercial competitor selling jewellery liable for trademark infringement should they utilise the trademarked colour.
Accordingly, Specsavers had to detail the goods and service classes within which they were seeking trademark protection. The application filed with the IPO covers 5 different classes of goods and services.
The 5 Classes
This includes glasses, lenses, frames, goggles, safety goggles and contact lenses amongst others.
Hearing aids, ear protectors and parts and fittings of medical hearing instruments amongst others.
Printed matter, photographs, packaging material, stationery, books, magazines and advertising and promotional material amongst others.
Optician retail services, online retail services, health services, financial services, amongst others.
Eyecare services, eye tests, optical aftercare services amongst others.
Following the successful application, Specsavers now have the exclusive right of use over the trademarked words in relation to the goods and services detailed within the trademark application as highlighted above. This now provides Specsavers with the ability to block their competitors from using the words within their advertising campaigns.
It is quite rare for the IPO to allow an application relating to a single word, this is especially the case when the words is still in common usage, however an applicant can be made where the word has a link to the applicant through use or association.
Carlsberg previously managed to obtain a trademark over the word ‘probably’ within the remit of beer and alcohol related products, however the remit of protection afforded to Carlsberg is much smaller than the remit of protection being sought by Specsavers.
At the time of writing three applications had been filed against the application. This is not surprising as the application, if successful, would limit the competitors marketing lexicon, which in the case of Specsavers could provide a very powerful marketing tool.
If successful there would no doubt be further companies that sought to trademark single words in order to protect their advertising campaigns and to limit their competitors’ campaigns.
Our Company & Commercial Solicitor Jonathan Finn comments as follows:
It is unusual for the IPO to accept a single word trademark, especially one that is in everyday use. You may find that Specsavers’ competitors will study the application and they may seek to challenge it or they may well find themselves in breach of the trademark.
It could also perhaps lead to a flurry of other businesses seeking to apply for single use words that enhance their brand image. The IPO can expect something of an Indian summer of applications.