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‘Should’ve’ the UK Intellectual Property Office allowed Specsavers’ new trade mark application?

A recent application by Specsavers to register the words ‘SHOULD’VE’ has been accepted by the UK Intellectual Property Office (IPO). The application, which has received quite a lot of media attention since it was published, was filed to extend Specsavers’ protection of its well-known slogan: 'Should’ve gone to Specsavers'. 

Distinctiveness requirement

One of the reasons the application has garnered so much attention is that common or generic words are not usually registrable as trade marks as they do not satisfy the requirement of distinctiveness. Generally, in order to be registered, trade marks need to distinguish the goods and services of one company from those of another.

As trade marks are a monopoly right, it would also be unfair to grant one company the use of a common or generic word in respect of certain goods or services to the exclusion of all others.  But common or generic words can be registered where they are not descriptive or commonly associated with the goods or services protected or where they have become synonymous with a particular brand or undertaking. The latter is what is known as acquired distinctiveness i.e. where inherently indistinctive marks have become distinctive and built up a significant reputation through widespread use. Examples of common or generic words that have been registered previously include Sky International’s registration of ‘SKY’ for television, broadband or communication services and Carlsberg’s registration of ‘PROBABLY’ for alcoholic beverages.

Specsavers’ application 

As could be expected, Specsavers’ application for ’SHOULD’VE’ has been applied for in respect of a range of optical, optician and hearing related goods and services. But, rather more surprisingly, Specsavers has also applied for protection in class 16, covering a number of unrelated goods such as stationery, gift bags and greeting cards. This gives Specsavers a much wider remit than would have been anticipated.  

Next steps 

Having been accepted by the IPO, the ‘SHOULD’VE’ application has now been published for opposition purposes, giving third parties two months to file an objection or observations against the application. Objections or observations can be filed on the basis of earlier identical or confusingly similar rights (known as 'relative grounds') or on the basis that the mark is generic and should be free for anyone to use (known as 'absolute grounds'). 

One thing for sure is that the application cannot expect an easy ride, given the criticism it has already faced due its non-distinctive and also broad nature. In addition to this, a large number of ‘Notices of Threatened Opposition’ - which extend the opposition period by a month and put the trade mark owner on notice of a possible objection - have already been filed against the application. What will happen remains to be seen. But it seems unlikely that the application will get through in its current form, if at all. 

This publication is intended for general guidance and represents our understanding of the relevant law and practice as at September 2016. Specific advice should be sought for specific cases. For more information see our terms & conditions.

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