Supermarket chain held to be "living dangerously"

United Kingdom
In Specsavers International Healthcare Limited v Asda Stores Limited ([2010] EWHC 2035 (Ch), July 30 2010), Specsavers International Healthcare Limited has succeeded with a High Court claim for trademark infringement against Asda Stores Limited pursuant to Article 9(1)(c) of the Community Trademark Regulation (40/94), largely due to a finding that Asda had intentionally been "living dangerously". The remainder of Specsavers' claims were rejected.

Asda commenced a marketing campaign for its in-store opticians using a logo comprising two ovals with the words 'Asda Opticians', and posters bearing the straplines "Be a real spec saver at Asda" and "Spec savings at Asda":


Specsavers brought claims for passing off and trademark infringement pursuant to Articles 9(1)(b) and 9(1)(c) of the regulation, relying upon Community trademark registrations for the word mark SPECSAVERS, different forms of a logo mark of two overlapping ovals with the word 'Specsavers' and a wordless logo mark comprising only the two overlapping ovals:

 

The wordless logo mark was held to be invalid for non-use, the court finding that it was not in use when used in conjunction with the Specsavers name. Referring to Article 15(2) of the regulation, the court considered that the addition of 'Specsavers' added a further element to the logo, materially reducing the distinctive character of the ovals alone. This mark was thus not considered for the purposes of the infringement claims.
 
The court then turned to Specsavers' claims for infringement pursuant to Article 9(1)(b) and passing off.
 
The court identified a degree of similarity between the Asda and Specsavers logos, but also differences due to the lack of overlap in the Asda ovals and significantly different wording. However, there was no likelihood of confusion. Since the Asda name was itself well known, a reasonably circumspect customer would not think that the Asda Logo was Specsavers' due only to the use of two ovals. Moreover, the Asda logo was primarily used within Asda stores, further lessening the prospect of confusion.

When examining the Asda straplines, the words 'spec saver' and 'spec savings' alone were the correct signs for comparison with Specsavers' word mark, as they had the quality of being unconventionally proximately placed words and were intended to have a particular impact. Despite the close similarity with Specsavers' mark, the court found that there was no likelihood of confusion when viewed in context, as the straplines comprised a play on words and featured the Asda name at the end.  

Similarly, the passing off claim failed because Asda's use of the straplines and logos did not give rise to a misrepresentation. Although the court took into account the cumulative effect that these might have on customers, ultimately there was too much Asda branding for customers to be misled.
 
Specsavers was, however, successful with its Article 9(1)(c) claim, with the court finding that the strapline "Be a real spec saver at Asda" took unfair advantage of the reputation of the SPECSAVERS mark. That strapline brought to mind Specsavers and its word mark, thereby creating a link and giving Asda an advantage, as it referenced the Specsavers brand and customers' knowledge of its reputation for value. It was irrelevant for these purposes that Asda had its own reputation for value. There was evidence that it had been Asda's intention to market as closely to Specsavers as possible, and that the logo and straplines had been designed with this in mind. Legal advice had been sought to assist with designing the logo and straplines away from the Specsavers marks only as far as necessary to avoid infringement. In the court's view, Asda had been "living dangerously", and Asda's intention to do so was sufficient to find that the advantage taken of Specsavers' mark was unfair (following the guidance laid down by the Court of Appeal in Whirlpool v Kenwood).
 
The same argument did not succeed for the other strapline and the logos. With these, the link created was weaker, and insufficient for the court to find that an unfair advantage had been taken.
 
Jennifer Gibson, Burges Salmon LLP, Bristol

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