Keeping an eye on the competition

The High Court has delivered its decision on the trade mark infringement case between Specsavers and Asda: [2010] EWHC 2035 (Ch), which related to Asda’s optical business.

Specsavers has two Community word trade marks for “SPECSAVERS” and a logo mark with the word “Specsavers” (illustrated). Asda created its logo (also illustrated) together with two straplines, “Be a real spec saver at Asda” and “Spec saving at Asda”, when relaunching its optical business.

Specsavers brought trade mark infringement proceedings against Asda under provisions of the Community Trade Mark Regulations and a passing off claim against Asda for all three elements of the Asda campaign.

Trade mark infringement

Specsavers argued that the Asda campaign infringed the Specsavers trade marks because the similarity between the Asda logo and the Specsavers logo and the use of the straplines would result in a likelihood of confusion on the part of the public. Furthermore, their use would take unfair advantage of the Specsavers marks.

Mr Justice Mann confirmed that it was necessary to compare the overall impression of the Asda logo, which had separate components, the ovals and the words. While the Specsavers and Asda logos were similar, the separation of the ovals and, more significantly, the prominence of the Asda wording prevented any confusion.

As regards the straplines, there was a similarity between SPECSAVERS and “spec savers” in the first strapline. However, as Asda’s name featured at the end of this strapline, it was clearly an advert for Asda, not Specsavers. The “spec saver” was the person, not another chain of opticians. Additionally, the split of the words and the non-use of the capital letter also distinguished the Asda campaign from the Specsavers trademark.

In relation to the second strapline, the use of “spec saving” was significantly different from SPECSAVERS. The court held that there was no confusion in relation to either strapline.

In order to establish unfair advantage Specsavers needed to illustrate that the Asda campaign called the Specsavers trade marks to mind and that an unfair advantage was achieved as a result. Evidence was led that when developing its campaign, Asda had intended to parody the Specsavers advertising, logo and messages (although it was clear that Asda always intended to do so without going beyond what was legally permitted and without actually infringing the rights of Specsavers). The court considered that Asda’s intention to bring the Specsavers trade mark to mind was sufficient to make any advantage obtained unfair. Mann J referred to the recent L’Oreal v Bellure decision (discussed, Journal, August 2009, 18), noting that “an advantage taken will be unfair if the use amounts to riding on the coat tails of the mark”.

As regards the first strapline the court considered that Asda had started with Specsavers’ reputation for value and then built on it, saying that customers would get even more value at Asda. Mann J said Asda was giving itself a “leg up” by doing so. As a result, the advantage was unfair, resulting in trade mark infringement. This is the only successful claim Specsavers had, and ultimately it was of limited value as Asda had already ceased using the strapline.

While there was a link between the second strapline and the Specsavers trade mark, the link was very weak and therefore there was no unfair advantage and no trade mark infringement.

With respect to the Asda logo, whilst this was capable of bringing Specsavers to mind, this was only because of the ovals and nothing more. This was also heavily countered by the Asda wording. Any advantage was too slight to be unfair.

Passing off

As Mann J did not find evidence of confusion for trade mark infringement in relation to the logo or the straplines, and given that the key element for passing off is misrepresentation, it was not surprising that he did not find Asda liable for passing off. He considered that the combined effect of the logo with the straplines also did not amount to passing off as “it carried too much Asda branding”.

Comments

This decision is interesting as it demonstrates that, even where a marketing campaign is designed to be close to that of a competitor (and evidence can be led to support this), trade mark infringement and passing off will only be established when the strict requirements of such actions are met. Campaigns which create an association with a third party campaign will not necessarily be considered to infringe trade mark rights, although this case and the finding of trade mark infringement in respect of the first strapline serve as a reminder that there is a fine line which can be crossed and care must be taken to ensure no unfair advantage is taken of a competitor’s reputation.

• Ross Nicol, associate and Julie Dunbar, senior solicitor, Maclay Murray & Spens LLP