Specsavers moves to trademark ‘should’ve’

Specsavers’ advertising campaigns, which show people failing to carry out tasks due to not wearing glasses, ends with the slogan ‘Should’ve gone to Specsavers’. The current television advertisent features English actor Mr John Cleese, star of former UK sitcom Fawlty Towers.Specsavers has been using the hashtag #shouldve as part of its social media campaign for some time and the slogan has become so well-known that it has started being incorporated into ‘mes’ (humorous viral images often shared through social media) and other aspects of popular culture.The recent tradark application, which was filed with the UK Intellectual Property Office on 18 July, now seeks to secure Specsavers’ rights to use the terms ‘should’ve’ and ‘shouldve’ [sic] across several classes of commercial areas, including classes 9, 10, 16, 35 and 44.These classes cover optical apparatus and instruments, such as spectacles, sunglasses and lenses; retail services, including optician retail store services and online retail services; optician services; and medical hearing instruments, among other areas.The company has already secured a tradark for the ‘Should’ve gone to Specsavers’ slogan.Several lawyers cited by The Times appeared sceptical that the application would be successful given how common the phrase was, however one disagreed with th.London patent attorney Mr Martin MacLean was reported as saying he was surprised Specsavers was attpting to tradark ‘should’ve’ without it being part of a longer phrase, while Dublin-based solicitor Mr Brian Conroy, who deals with tradark applications, commented, In my experience, this is what drives non-legal people mad. Another tradark specialist, Ms ma Reeve of Mathys & Squire, said it would be very difficult to monopolise ‘should’ve’ , adding that tradark applications with completely distinctive slogans such as Nike’s ‘Just do it’ were far more likely to be approved.Mr John Coldham, a director of intellectual property at Gowling WLG, agreed that a company would need to prove it had acquired distinctiveness in the tradark it was seeking to register if it wished to successfully secure tradark protection for part of a longer slogan. So in this case, consumers would have to see ‘should’ve’ and think of Specsavers, he explained. I don’t know whether the evidence will support that, but my gut feeling is that it will be unlikely to do so. I have seen ‘should’ve’ used as a hashtag following Specsavers’ promotion of it in its advertising campaigns. However, this does not automatically mean that people would consider ‘should’ve’ (with or without the apostrophe) as a brand; they are only likely to associate it with Specsavers because they have seen the advertising campaign or been told about it, rather than because they have seen it in isolation, he added.On the other hand, Mr Jery Morton, a head of intellectual property litigation at Harbottle and Lewis in London, was cited as saying, There is no reason in principle why ‘should’ve’ cannot be registered if it has sufficient distinctiveness. By way of examples, ‘never’, ‘don’t’ and ‘always’ are each currently registered as tradarks in the UK and/or European Union. That does not prevent competitors from using those words in ordinary descriptive sentences. One might question the value of this kind of registration if it will not be a product brand in its own right. Mere use of ‘should’ve’ in a longer English sentence by Specsavers might not amount to genuine use of the tradark. But there is a lot of interest in protecting hashtags as tradarks, which is where this could add value for Specsavers as a stand-alone word mark. The tradark attpt appears to confirm that Specsavers plans to continue using the slogan well into the future.