Intellectual Property Experts Look Into The UK IPO’s Decision

Specsavers has had its plan to trade mark the use of "should've” approved by the UK Intellectual Property Office (IPO).

Our intellectual property specialists Alex Newman and Amy Au consider the possible reasons behind Specsavers’ application and take an in-depth look at the case.

The background

Trade marks must fulfil certain criteria to be registered in the United Kingdom and attract the protection which registration confers.

Under the Trade Marks Act 1994, a trade mark may not be registered if it is devoid of distinctive character.

So just how have Specsavers managed to convince the UK Intellectual Property Office to accept “Shouldve” and “Should’ve” as registered trade marks?

The rationale

Specsavers’ “Should’ve gone to Specsavers” slogan has been the cornerstone of its high profile advertising campaigns in recent years. If they are now looking to diversify their slogan (and we don’t know whether they are or not), keeping “Should’ve” or “Shouldve” as the common element, it is not particularly surprising that they have applied to register “Should’ve” and “Shouldve” as trade marks.

The debate

The IPO may accept an inherently non-distinctive word or slogan to be a valid trade mark in relation to particular goods and services if it has been used by a business to such an extent that it has become factually distinctiveness of that business when used in relation to those products or services.

However, Specsavers does not really use “Should’ve” or “Shouldve” in its advertising. It uses “Should’ve gone to Specsavers”. Many would therefore argue that it is the latter that is distinctive of Specsavers, and not the words “Should’ve” or “Shouldve” in isolation.

Furthermore, each of Specsavers applications for “Shouldve” and “Should’ve” cover a broad range of goods and services. As expected, they cover spectacles and sunglasses, but the scope of protection applied for by Specsavers is much wider.

If Specsavers’ applications proceed to registration, they will have trade mark protection for “Shouldve” and “Should’ve” in relation to a whole range of products which we would not normally associate with Specsavers and a broad range of services which are not limited to those for which they are known.

This would make advertising difficult for any competitor, and even for some non-competitors, intending to market and advertise their goods and services using the words “Shouldve” or “Shouldve”, as Specsavers will be able to argue that they are infringing its trade marks.

The summary

It is surprising that the IPO seems to consider that these words are distinctive of Specsavers in isolation. However, it’s important to recognise that acceptance by the IPO is not the end of this story. Any business which objects to Specsavers obtaining a monopoly on the use of “Shouldve” and “Should’ve” in the fields covered by its applications now has up to three months to file opposition proceedings.

It would be no great surprise if Specsavers finds itself confronted with a very long list of opponents.
It would be a surprise if no one opposes those applications, though, and more surprising still if they are opposed but the oppositions are ultimately rejected.

If Specsavers are successful then any competitor which uses “Should’ve” or “Shouldve” in any of their marketing will be at risk of facing expensive, and potentially very high profile, trade mark infringement proceedings.

At that point, the true scope of Specsavers’ trade mark protection will be tested, and it may transpire that it is not enforceable as widely as they had hoped and intended.