Kitchin J recently ordered a speedy trial in litigation started by high street opticians Specsavers over Asda’s launch of its competing optician services. The Jersey-based chain was not impressed with Asda’s use of the phrase “Be a real spec saver” and a familiar looking logo. Anna Williams reports.
Who: Specsavers and Asda
When: 3 November 2009
Where: High Court of Justice, London
Law stated as at: 2 December 2009
Specsavers, the high street opticians based in Guernsey, is not at all happy with what it considers to be "copycat advertising" created by Asda. Asda recently launched its new Asda Opticians brand both online (on its own website and on Twitter) and in more than 80 supermarkets. To promote this new offering, Asda used the slogan "Be a real spec saver at Asda" and a logo consisting of two ellipses with the words "Asda Opticians" inserted within them. The logo does indeed look similar to the well-known logo used by Specsavers.
Not surprisingly, Specsavers has objected to Asda's branding and advertising on the following two counts:
1. the similar logo created constitutes an infringement of Specsaver's pre-existing trade marks; and
2. the "Be a real spec saver at Asda" slogan is designed to mislead customers and harm Specsavers' business.
Specsavers wanted the case to be heard by the High Court on an urgent basis in January 2010. At the initial court hearing in November, the presiding judge (Mr Justice Kitchin) was persuaded that the matter should be treated as a matter of urgency and he agreed there was enough evidence to suggest that Specsavers' reputation was threatened by Asda Opticians' marketing campaign. Specsavers was not successful in securing a January hearing date as they would have liked, but the case is scheduled for a full trial in April 2010. Asda’s barrister suceeded in pushing back the expedited date for trail on the basis that:
1. Asda's lawyers needed additional time to prepare their defence because they are required to stack Asda supermarket shelves over the Christmas period (Asda company policy requires all executives to work on the shop floor during the Christmas period); and
2. they also planned to conduct a wide-ranging survey of Asda shoppers before the trial to determine whether they had been misled by its advertising and it would be difficult to undertake such a survey during the busy Christmas period.
During the hearing, Asda indicated to the court that it would stop using the slogan "Be a real spec saver at Asda" slogan in November in keeping with its original marketing strategy but that it would continue to use the new Asda Opticians logo within its stores and on its website despite Specsavers’ complaints. Specsavers also revealed that it is concerned that Asda will use other slogans similar to those employed by Specsaver, such as "Should have gone to Asda", but Asda's Counsel denied Asda had any such intentions. However, Specsavers have indicated to the court that since the full trial will now take place three months later than they had hoped, they may seek to apply for an interim injunction that could potentially block Asda from using any such similar logo pending the resolution of the trial in April.
Asda employed aggressive advertising tactics when it launched its Asda Opticians offering in November. It began selling single vision glasses for £50 and designer glasses for £70 regardless of the strength of a customer’s prescription. It accused other retailers of misleading customers by advertising their glasses for figures as low as £25 when prescription requirements could then increase the price of some glasses by as much as nine times the initial advertised price. The battle between Asda and Specsavers is only just getting started…..
Why this matters:
This case promises to be very interesting for advertisers and their agencies and advisors and we await the outcome of the trial in April 2009. It will also be interesting to see if Specsavers seeks to rely in any way on this year's L'Oréal v Bellure case brought in the High Court regarding "copycat perfumes" mimicking L'Oréal brands.
L'Oréal sued for passing off and trade mark infringement although its passing off action failed as all parties concerned accepted that there was no chance of consumers being confused into believing the copycat products were made by the same people as the original fragrances.
It was this lack of consumer confusion that meant L'Oreal's passing off claim failed, so we await the results of Asda's consumer research, which aims to assess levels of consumer confusion.
In the L'Oreal case the ECJ was asked to consider confusion and trade mark infringement and amongst other things, its decision expresses the opinion that "unfair advantage" in a trade mark context is to be construed relatively broadly. The ECJ held that there will be an advantage that has been unfairly taken of the distinctive character or the repute of a company's mark where a third party attempts to "ride on the coat-tails" of that mark in order to benefit from its "power of attraction, its reputation and its prestige" and to exploit the marketing effort expended by the proprietor of that mark. Will the High Court feel this is what Asda has done? We will report back after the hearing in April 2010…..
Anna Williams (née Montes)
Osborne Clarke, London