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Imitation is Costly -‐ Specsavers v Asda
1. In Short
In October 2009, Asda carried out a marketing campaign to re-‐launch its in-‐store opticians making use of the straplines shown below. Specsavers sued for trade mark infringement. At first instance the Court held that Asda’s use of the First Strapline was infringing as it took unfair advantage of Specsavers’ marks but it rejected all other claims.
The First Strapline The Second Strapline The Asda Logo
The Court of Appeal (“CoA”) has just given its judgment and found that the Second Strapline and Asda Logo also infringe. However questions about the validity of the Specsavers logo registration (without words) were referred to the European Court.
In our view this judgment is extremely favourable to well-‐known brand owners, as even using ‘Asda’ in the Asda Logo below did not avoid the finding of infringement. The requirement to show the “link” with the famous brand suddenly seems much easier to prove and here we feel the Court went too far. The CoA were ready to look at the surrounding circumstances of the infringing use (rather than look at the Logo in isolation) and also said that where the same colour was being used, and that colour has become distinctive of the well-‐known brand, then the case for infringement is stronger. As before, if a defendant has sought to target a brand, then that may help in proving the infringement case.
In summary this judgment makes it easier for well-‐known brands to sue “free –riders” or imitators. So if you are imitating a famous brand be warned, if you own one then be more confident!
2. Infringement based on a Likelihood of Confusion / Association
The first infringement claim required a finding of similarity that would cause a likelihood of confusion / association. The CoA agreed with the High Court that neither of the straplines nor the logo would infringe.
The CoA did, however, comment that if a brand has acquired distinctiveness for a particular colour then that will be a factor in deciding infringement under this ground (under the “global appreciation analysis”). It also asked the ECJ to comment on this issue.
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3. Infringement based on taking unfair advantage of a “Mark with a Reputation”
The second form of trade mark infringement required Specsavers to show both a link between the registered mark and the offending signs and that an unfair advantage was being gained.
For the First Strapline, the CoA agreed with the High Court that there was infringement – there was a link to Specsavers and the consumer is told there is a better deal at Asda (thus gaining unfair advantage). Asda was therefore found to be clearly referencing consumers’ knowledge of Specsavers and its reputation for value.
Unlike the High Court, the CoA also found that the Second Strapline and the Asda Logo infringed under this ground. Although “spec savings” is not as close to Specsavers as “spec saver” the court found there was a connection between the second strapline and Specsavers (helped by the fact that the evidence showed Asda intended to make this connection).
The CoA also found that use of the Asda Logo created a link with the Specsavers Logo trade marks and interestingly took into account the use of the Logo, not on its own, but as part of the advertising campaign (specifically the Logo alongside the straplines). Again Asda’s intention to target Specsavers appeared to be a factor and this “cumulative” effect led to a finding of infringement, even though the words SPECSAVERS and ASDA were prominent in the respective trade marks.
4. Non-‐Use
Asda sought revocation of the Specsavers trade mark being the “Wordless Logo” that was registered, see below, on the grounds of non-‐use. The point being that the trade mark had always been used with the words SPECSAVERS across it, never actually used as shown below.
This issue has not been before the courts very often and the CoA found the guidance from the ECJ to conflict; in the HAVE A BREAK case it was found that use of part of a mark was sufficient to show acquired distinctiveness in a trade mark whereas in the BRIDGE case use of a similar mark THE BRIDGE was not considered to suffice to validate a registration for BRIDGE. Accordingly the CoA referred questions to the ECJ in order to clarify the position.
The answers to these questions should be watched carefully by major brand owners who operate in Europe. Many have spent significant time and budget registering “non-‐traditional” trade marks such as colour (Cadbury purple), shapes (Toblerone bar), packaging (Heinz tin), and logos (as here) in an effort to protect imitation. In many cases these trade marks are not used on their own but in close combination with the primary word brand. If the questions and subsequent judgment go the wrong way then those registrations may become vulnerable and going after imitators will become more difficult.