Should’ve protected that brand?

16 Aug 2016 | Comment

The Intellectual Property Office has published an application received from Specsavers B.V, owners of the Specsavers brand and retail outlets, to register the words ‘should’ve’ and  ‘shouldve’ as UK trademarks.

In a remarkable move to strengthen the brand and its protection, Specsavers’ application to register the single and apparently ordinary words has passed initial examination and has now been published. The association of Specsavers with the words, at least in the context of the slogan ‘Should’ve gone to Specsavers,’ is certainly familiar to most of us by now – we routinely see the odd advert or even make the odd quip to emphasise how a friend or colleague ought to have their eyes checked. However, should the words alone be capable of being trademarks?

The application is still at  a relatively early stage, having passed by the IPO examiner only so far. It will now be open to anyone to object for two months from the date it was published, namely until 12 October 2016. After that, the IPO will consider whether the trademarks should be granted.

The effect of granting the application, which (as with all applications) relates to certain classes of goods and services, could be huge. Specsavers wish to have the statutory right to use the words (the marks) in relation to any class of goods or services the mark is registered for. In this case that will be not just optician and hearing services, but also to photographs, stationery, teaching materials and retail services (amongst others). Once a trademark is registered in the UK the owner of that mark has the right to prevent others from using the mark in connection with goods in the identified categories. It should ensure consumers can identify whose goods and services they are purchasing and prevent unfair advantage being taken.  The actual effect could be a monopoly on the use of seemingly innocuous words.

So, will retail service providers be thinking they should’ve moved sooner? Or that they should object? This is a rare case of an attempt to register a single everyday word as a trademark, with such applications often being tough to succeed in. However, applications of this kind are on the rise and more often short phrases are making the grade, for example with giants like McDonalds registering ‘I’m lovin’ it’. The IPO will need to consider any objections raised carefully however, and it is likely that other retailers may be concerned given the scope of protection sought.

Whether the marks are opposed successfully or not, the move is a reminder of the vital importance of slogans and catchphrases in today’s marketing world. Specsavers is not the first, and will not be the last, to make this move. They follow Nestlé’s battle over ‘Have a Break’, and Carlsberg’s infamous ‘Probably’. The power of a distinctive slogan, particularly in a world driven by social media and mobile technology, cannot be underestimated and Specsavers certainly recognise that.

If you would like to discuss intellectual property registrations or disputes please contact Tracey Singlehurst-Ward on 029 2066 0592.

For a recent report in our Spotlight series that focuses on intellectual property see here.

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