Eye ‘should’ve’ done that! – Specsavers nears approval to trade mark single word “should’ve” & “shouldve”

As briefly reported by this blog, a few weeks ago Specsavers filed an application with the UK Intellectual Property Office to have SHOULD'VE and SHOULDVE registered as trade marks in Classes 9, 10, 16, 35, and 44 of the Nice Classification. 

This move has attracted broad media coverage [eg here and here], and young IP enthusiast Kishan Mathy has also explored the story at length.

Here's what Kishan writes:

"After winning a six-year IP dispute with Asda in 2014 [here], Specsavers is making again trade mark headlines as it continues to protect its brand.

On July 18 last Specsavers applied to the UK Intellectual Property Office (IPO) to register single words “should’ve” and “shouldve” as trade marks. This contraction derives from Specsavers well-known catchphrase “should’ve gone to Specsavers”, which the optical retail chain has been using since 2003 [the phrase has been a registered EU trade mark since 2007]. The UK IPO has now approved the application by Specsavers, which means that third parties have until 12 October to oppose the application.

A  number of commentators has criticised IPO’s prima facie approval of the application to ultimately provide monopoly in single words, noting how this would prevent other companies from using the words as registered. The IPO has also come under criticism on consideration of the broad scope of the registration sought (five classes of goods and services), also beyond the remit of optical services. For example, one of the classes applied for concerns ‘Printed matter’ (Class 16), which could potentially provide Specsavers with considerably clout over printed retail services.

Nevertheless, this is not the first instance where a company has registered a single word. In 1993 Carlsberg registered the word PROBABLY under Class 32 (Lager; Beer) and extended protection in 2009 under Classes 33 (Alcoholic beverages) and 43 (Services for providing food and drink). However, Carlsberg's registration differs from Specsavers's as protection is limited to use for alcoholic beverages. Upon further perusal of the IPO trade mark register there are other single words that are registered such as ALWAYS and NEVER, however to a narrow list of classes.

Despite the legal and commercial concerns, Specsavers's decision to register single words SHOULD'VE and SHOULDVE should be recognised as intelligent business strategy, considering the proliferation and potential of social media. The use of hashtags has become a significant vehicle of marketing for businesses. Hashtags have the power not only to categorise content but also to form trends and thus generate interest. Therefore, registering a specific word will be integral for Specsavers in expanding their marketing activities and driving future campaigns. For example, the hashtag ‘#should’ve recently accompanied the full Specsavers catchphrase. It is thus apparent that registration will help Specsavers to control use in the full spectrum of social media.

Other businesses will most likely be closely monitoring whether Specsavers will be successful in formally registering these trade marks. In the event of successful registration we should expect an increase in similar trade mark applications for single words."