United Kingdom: Trade mark application for Should’ve

November 21 2016

The well-known optical retail chain Specsavers have been hitting the headlines in the UK again. This time it is not for their successful court battles with British supermarket retailer and Wal-Mart subsidiary, Asda, which set an important precedent for the protection of colour trade marks, but for filing an application with the UK Intellectual Property Office (UKIPO) to have Should've and Shouldve registered as trade marks in classes 9, 10, 16, 35, and 44.

Specsavers applied to the UKIPO on July 18 2016 to register the two single words as a series of trade marks. This stems from the strapline of "should've gone to Specsavers" which Specsavers has been using since 2003 and has registered as an EU trade mark since 2007.

The UKIPO have accepted and published the application, which means that third parties had until October 12 to oppose the application. Indeed, six separate parties filed notices of threatened oppositions against the application within four days of the application being published, which would indicate that opposition proceedings against this application are likely.

Unsurprisingly, the UKIPO's acceptance of this application has met with severe criticism, as this could ultimately provide a monopoly in the single, commonly-used words, and prevent other companies from using the words as registered. Further criticism has been fired at the UKIPO for the broad scope of the five classes of goods and services for which registration was sought, seemingly beyond the remit of optical services, for example printed matter (class 16), which could provide considerable clout over printed retail services. The UKIPO has previously accepted single, commonly used words for registration but for far narrower specifications, such as Probably for classes 32 (lager; beer), 33 (alcoholic beverages) and 43 (services for providing food and drink), Always and Never, also to a narrow list of classes.

Beyond these concerns, Specsavers' decision to register Should've and Shouldve is relevant business strategy in light of the significant use and reliance of marketing on social media. Hashtags are commonly used to catalogue content, note trends and generate conversation and topics of discussion in broad sectors of the markets. For example, the hash tag #should've recently accompanied the full Specsavers catchphrase. Clearly any resulting registration for Should've and Shouldve will help Specsavers to control use of these marks in the full spectrum of social media.

Undoubtedly, many people will be monitoring Specsavers' application, with an increase in similar trade mark applications for single words likely should it be successful.