Specsavers and Asda lock
spectacles
The Court of Appeal has in part allowed an
appeal by Specsavers ('S') against a High Court decision that the
use of "Be a spec saver at Asda" in marketing, by
supermarket giant Asda, infringed some, but not all (of those
pleaded) of S's registered trade marks under Article 9(1)(c) of the
Community Trade Mark Regulation (40/04/EEC now
207/2009/EC). Asda cross-appealed against the High Court's
finding that the strapline infringed various word only CTMs owned
by S but the cross-appeal was rejected because use of the above
strapline was determined to take unfair advantage of the
distinctive character or repute of the CTMs. Furthermore the court
dismissed an appeal by S that various straplines and logos used by
Asda infringed S's CTMs under Art 9(1)(b). The court did however
allow an appeal by S that use of a second strapline "Spec
saving at ASDA" infringed S's marks under Art 9(1)(c). Finally
the court stayed an appeal by S against an order for revocation of
a logo only mark and a linked allegation that the mark had been
infringed by Asda under Arts 9(1)(b) and 9(1)(c), the decision in
these matters was stayed pending reference to the
ECJ.
background
Back in 2009 supermarket giant Asda Stores Ltd
began a marketing campaign in order to revive the flagging fortunes
of its in-store opticians. Part of the marketing campaign included
the use of two straplines:
- "Be a real spec saver at Asda" ('the first
strapline'), and
- "Spec saving at ASDA" ('the second strapline').
Asda also rolled out a new logo which
compromised of two white ovals placed side to side and containing
the words 'ASDA' and 'Opticians' written in Asda's corporate green
colour. In some situations these colours were reversed, ie green
ovals and white text.
Upon finding out about Asda's marketing
Specsavers International Healthcare Ltd ('S'); the well known chain
of opticians; brought proceedings against Asda for trade mark
infringement and passing off. In bringing the trade mark
infringement claims S relied upon the following CTMs:
- two word only 'SPECSAVERS' marks
- three marginally different logo marks all comprised of two
overlapping ovals with the word 'Specsavers' across the ovals, no
colours are claimed in these registrations ('the logos')
- a logo mark without any word aspect, ie merely two
overlapping ovals, no particular colours are claimed for this
registration ('the wordless logo').
Whilst none of the logo marks owned by S
claimed particular colours they are in practice represented in a
particular shade of green.
the High Court decision
Mann J's High Court judgment in this case has
been heavily criticised, he found as follows:
- Asda had infringed S's trade marks through
the use of the first strapline because said use took unfair
advantage of the distinctive character or repute of the marks (Art
9(1)(c)).
- All other infringement claims including
infringement of the aforementioned logo marks were rejected.
- S's claim for passing off was rejected.
S appealed Mann J's ruling as follows:
- Against the rejection of the claim for infringement under
Article 9(1)(b).
- Against the rejection of the claim for infringement of both the
second strapline and the logos under Article 9(1)(c).
- Against the revocation of and failure to find infringement of
the wordless logo.
Asda cross appealed against the finding of
infringement under Article 9(1)(c) in respect of the first
strapline.
Court of Appeal decision
Article 9(1)(b)
Kitchin LJ confirmed that in assessing
likelihood of confusion it is for the court to consider the matter
from the perspective of the average consumer of the goods or
services in question, taking into account all factors that are
likely to affect that average consumer in considering the marks.
According to Kitchin LJ the average consumer would simply see the
marks as "specsaver" and "Spec savings"
respectively.
As mentioned above S's marks are used in a
distinctive green colour, in the High Court Mann J did not attach
any significance to the enhanced reputation that the logo marks
(including the wordless logo) enjoyed through the use of this
colour, on appeal Kitchin LJ found the law to be unclear and
referred a question to the ECJ in respect of this.
Kitchin LJ did however restrict the reference
to only the wordless logo. His Judgment stated that colour made no
difference to the likelihood of confusion of the Asda logo to the
logo marks (i.e. S's two logo marks that feature the word
'Specsavers'). In his view the contrasting words of the marks were
sufficient to create a different overall impression regardless of
colour.
An interesting point that arose in
consideration of Article 9(1)(b) is that in the High Court Mann J
found that Asda was "living dangerously", Kicthin LJ
stated that it is important to: "distinguish between a
defendant who takes a conscious decision to live dangerously and
one who intends to cause deception and deliberately seeks to take
the benefit of another trader's goodwill". In this instance it
was determined that Asda was living dangerously but this did not
amount to "evidence of an intention to confuse".
Article 9(1)(c)
The case of Davidoff & Cie SA v Gofkid
Ltd Case C-292/00 [2003] 1 WLR 1714 has confirmed that Article
9(1)(c) extends not only to dissimilar goods or services but also
to identical or similar goods or services.
Kitchin LJ dismissed Asda's appeal on the
basis that their use of the first strapline was such as to intend
to bring into mind S "and to convey superiority in terms of
value, and superiority or parity in the areas of range and
professionalism, and it has done so in a manner which does not
involve an objective comparison of verifiable and representative
features of the parties' goods or services", ie protection
could not be gleaned from the Comparative Advertising
Directive.
Moving on to the second strapline he agreed
with Mann J on the basis that "spec savings" was not as close to
"Specsavers" as "spec saver". However Kitchin LJ stated that:
"Despite the context of the second strapline as a whole which,
I accept, would dispel the likelihood of confusion as to origin, I
believe that the average consumer seeing this strapline would make
a connection with Specsavers". Combined with the unfair
advantage shown by the use of the "concept of Specsavers as a
value provider … such use inevitably gave Asda a marketing
advantage… Asda intended to benefit from the power of attraction
attaching to the Specsavers brand and to exploit, without paying
any compensation", Kitchin LJ found in favour of the
claimant's appeal.
A similar conclusion was reached in respect of
the logo marks, Kitchin LJ was satisfied that the purpose of Asda's
use of the logos and straplines was to create a link with S's logo
marks in the mind of the average consumer, it is this link that
conferred an advantage to Asda and such an advantage was considered
to be unfair and without due cause.
Finally we come to the wordless logo, Kitchin
LJ considered that Mann J was wrong to determine that there was no
evidence as to whether the average consumer recognised the wordless
logo when he or she saw the logo marks. Accordingly the issue arose
as to whether use of the logo mark would also constitute use of the
wordless logo, Kitchin LF felt that the current case law was
unclear and therefore referred the following questions on the the
ECJ:
questions to the ECJ
Kitchin LJ referred the following questions to
the ECJ:
"A. Where a trader has separate
registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use
capable of amounting to use of the graphic device mark for the
purposes of Article 15 of Regulation 40/94? If yes, how is the
question of use of the graphic mark to be assessed?
B. Does it make a difference if:
(i) the word mark is superimposed over the
graphic device?
(ii) the trader also has the combined mark
comprising graphic device and word mark registered as a Community
trade mark?
C. Does the answer to A or B depend upon
whether the graphic device and the words are perceived by the
average consumer as (i) being separate signs; or (ii) each having
an independent distinctive role? If so, how?
D. Where a Community trade mark is not
registered in colour, but the proprietor has used it extensively in
a particular colour or combination of colours such that it has
become associated in the mind of a significant portion of the
public (in a part but not the whole of the Community) with that
colour or combination of colours, is the colour or colours in which
the defendant uses the sign complained of relevant in the global
assessment of (i) likelihood of confusion under Article 9(1)(b) or
(ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If
so, how?
E. If so, is it relevant as part of the
global assessment that the defendant itself is associated in the
mind of a significant portion of the public with the colour or
particular combination of colours which it is using for the sign
complained of?"
summary
The Court of Appeal's decision found:
- In favour of S's appeal regarding the second strapline's
infringement of the word and logo marks under Article 9(1)(c).
- In favour of S's appeal regarding Asda's infringement of the
logo marks under Article 9(1)(c).
- Against S's appeal that the first and second straplines and the
Asda logo infringed the word and logo marks under Article
9(1)(b).
- Against Asda's cross appeal regarding the finding of
infringement under Article 9(1)(c) in respect of the first
strapline.
- Stayed proceedings in respect of the appeal against revocation
of the wordless logo and infringement of the same under Articles
9(1)(c) and 9(1)(b) and referred a number of questions to the ECJ
regarding this.
comment
Kitchin LJ's decision will be warmly welcomed
by brand owners as it places emphasis on the reputation that
Specsavers enjoy and the fact that Asda intended to target their
campaign at Specsavers and that this helped to show an unfair
advantage on the part of Asda.
Overall however this decision has raised
almost as many questions as it has answered and we will have to
wait for the ECJ ruling before commenting further.
View a full
copy of the judgment online.
