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IP Cases & Commentary – Details

1 February 2012

Court of Appeal Rules in Favour of Specsavers in Dispute with Asda

Richard Burton

Specsavers has won the latest round in the high profile case revolving around Asda’s optical advertising campaign which encouraged consumers to "be a real spec saver at Asda" and promoting "spec savings at Asda".

In 2010 the High Court found that Asda’s use of the phrase "be a real spec saver at Asda" infringed Specsavers’ trade marks but the rest of Specsavers’ case was dismissed. Specsavers appealed and the Court of Appeal has now ruled that use of the phrase "spec savings at Asda" was also an infringement.

With regard to the double-ellipse logo mark relied on by Specsavers, the Court of Appeal has referred five questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling regarding the role of colour in a trade mark infringement case and non-use. Lord Justice Kitchin said that the law was unclear on both aspects.

The appeal relating to a likelihood of confusion between the marks was actually refused; however, Lord Justice Kitchin upheld Specsavers’ grounds of appeal relating to the reputation in their trade mark and the unfair advantage the "spec savings at Asda" would take. Lord Justice Kitchin said, “I believe that the average consumer seeing this strapline would make a connection with Specsavers. I am confirmed in this view by the fact that this was Asda’s intention” (para 153). He further commented: “Asda intended to benefit from the power of attraction attaching to the Specsavers brand and to exploit, without paying any compensation, Specsavers’ marketing efforts by conveying to consumers that Asda offered real value in the form of spectacle savings” (para 154).

With regard to the third ground, this was stayed pending a reference to the CJEU. He said he was satisfied that this was a case in which it was necessary to seek the guidance of the CJEU as to the correct approach to be adopted to Article 15 of the Regulation where a trade mark proprietor seeks to establish use of a trade mark on the basis of the use of that mark in conjunction with another element. The following questions were put to the CJEU:

A. Where a trader has separate registrations of Community trade marks for:

  1. a graphic device mark;
  2. 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:

  1. the word mark is superimposed over the graphic device?
  2. 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?

Lord Justice Kitchin said that the question of whether the logo has been infringed under Article 9(1)(b) or (c) was one on which the Court had received very little assistance on. He said he would therefore welcome further short written submissions on this issue should it be necessary once the CJEU has responded to the questions he asked.

These further questions have been put to the CJEU on whether it is permissible to take into account the enhanced reputation enjoyed by Specsavers in the colour green:

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?

We look forward to receiving the judgment of the CJEU in connection with these questions. In particular, it will be interesting to see whether the CJEU follows its findings in the HAVE A BREAK case (Case C-353/03 Société des Produits Nestlé v Mars UK Ltd [2005] ECR I-6135).

In that case the Court found at paras 29-30 that “the expression ‘use of the mark as a trade mark’ must .. be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Yet, such identification … may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.”

Useful links

Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd and Specsavers Optical Superstores Ltd v Asda Stores Ltd [2012] EWCA Civ 24

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