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IPO doesn’t see anything wrong with Specsavers’ trade mark (Brands & IP Newsnotes - issue 3)

23 October 2016

Specsavers has managed to get its application to register “should’ve” (as in, “should’ve gone to Specsavers”) past the examination stage at the UK’s Intellectual Property Office (IPO).

If the application successfully navigates the opposition stage, it will be registered, thereby limiting the ability of third parties to use the word “should’ve” in relation to the goods and services for which the mark is registered.

Applicants seeking to register commonplace or everyday words can face difficulties in obtaining trade mark protection. Understandably, trade mark registries are reluctant to grant the powerful monopoly rights that come with a trade mark registration in respect of such words. So it’s not uncommon to reject such applications on the basis that the marks are not sufficiently ‘distinctive’ or fail to identify the applicant as the source of the goods or services.

Whether the tide is turning remains to be seen. The ‘should’ve’ application is a timely reminder to brands that have associated certain words with themselves or their services, may be able to protect against the use of those words by competitors. Carlsberg has registered “probably”, Orange has registered “the future’s bright”, Nestle has registered “have a break” and now Specsavers is seeking to register “should’ve”. What could you register?

This article was first published in the Brands & IP newsnotes publication - issue 3.

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