The fight goes on over Asda’s optical business ads featuring nuggets such as “Be a real spec saver at Asda,” “Spec saving at Asda” and an Asda logo whose spectacles format looked familiar. Jonathan Mayner reports on the latest round, complete with CJEU reference.
Topic: Brands
Who: Asda, Specsavers
When: 31 January 2012
Where: UK
Law stated as at: 29 February 2012
What happened:
The Court of Appeal has ruled in a trade mark dispute between two retailers: supermarket chain Asda and high street optician chain Specsavers. Marketinglaw previously reported on the High Court's decision in the case in September 2010 (see link here). While Specsavers did not succeed on every aspect of the appeal, the decision was a success for the optician chain, with the Court of Appeal making further findings of infringement where the High Court had not.
Asda's campaign
In October 2009 Asda began a marketing campaign to relaunch its offering of optical goods and services at its supermarket stores. As part of its campaign, Asda used the following logo:
and the straplines:
- "be a real spec saver at Asda"; and
- "Spec saving at Asda".
Specsavers' registered trade marks
Specsavers' brought a claim against Asda for trade mark infringement and passing off, relying on the following registered trade marks:
- Two word marks for SPECSAVERS; and the following logo marks
- The High Court ruling
The High Court held that ASDA's use of the marketing materials featuring verbal and visual allusions to Specsavers did not amount to passing off or trade mark infringement under Article 9(1)(b) of the Community Trade Marks Regulation (likelihood of confusion). However, the use of the words "spec saver" in the context of one of Asda's straplines was held to infringe the SPECSAVERS trade mark through taking unfair advantage contrary to Article 9(1)(c) (unfair advantage). Additionally, the court ruled that Specsavers' wordless logo mark should be revoked under Article 15 as it had not been used in trade during the preceding 5 year period.
The Appeal
Specsavers appealed against the High Court's finding that:
(i) Asda's overlapping ovals logo and strapline "Spec saving at Asda" did not infringe Specsavers' marks under Article 9(1)(c) of the CTM Regulations (i.e. did not take unfair advantage of the distinctive character or repute of those marks);
(ii) Asda's straplines and logo did not infringe Specsavers' word and logo marks under Article 9(1)(b) (i.e. did not give rise to a likelihood of confusion between Asda's signs and Specsavers' marks); and
(iii) Specsavers' wordless logo mark should be revoked for non-use under Article 15.
Asda appealed against the High Court's finding that:
(i) Asda's strapline "be a real spec saver at Asda" infringed Specsavers' word marks under Article 9(1)(c) (i.e. it took unfair advantage of the distinctive character or repute of those CTMs.
The Court of Appeal ruling
Likelihood of confusion
The Court of Appeal held that there was no likelihood of confusion under Article 9(1)(b). The High Court had properly considered the matter from the perspective of the average consumer of the goods and services in question. On analysis of the overall impression given by Asda's campaign materials there was insufficient evidence of confusion on the part of consumers.
Unfair advantage
The strapline "Spec saving at Asda" was held to infringe Specsavers' word marks and the logo marks which contained the word SPECSAVERS, under Article 9(1)(c) (unfair advantage). The court found that Asda had adopted a marketing strategy which used signs similar to Specsavers' registered trade mark without due cause, with the intention of bringing Specsavers to consumers' minds and thereby take unfair advantage of Specsavers' own marketing efforts.
Additionally, Asda's cross-appeal in respect of the strapline "be a real spec saver at Asda" was dismissed, the court upholding the High Court's finding of infringement under Article 9(c).
Revocation of wordless logo mark
The High Court's order for revocation of Specsavers' wordless logo mark was stayed, pending a reference to the Court of Justice of the European Union (CJEU). In issue here are questions of whether or not use of a word mark and a wordless logo mark together (i.e. giving the impression of w composite word and logo mark) constitutes use of the wordless logo mark for the purposes of Article 15. The CJEU will also be asked to consider whether or not it makes a difference if the trade mark proprietor also has a separate registration for the composite word and logo mark.
Why this matters:
This ruling further highlights the dangers of comparative advertising where a marketing campaign is designed to call to mind the offering of a competitor. When targeting competitors in this way, businesses must take care not to use a competitor's trade marks (or signs which are similar to them) without due cause and in a way which takes unfair advantage of them, or is detrimental to their distinctive character or reputation.
