Brands Bulletin - January 2012 Stop Press!

Stop Press!

Today, the Court of Appeal handed down its judgment in the case of Specsavers v Asda [2012] EWCA Civ 24.

Readers may recall that, at first instance, Specsavers successfully sued Asda for registered trade mark infringement.  The judge held that Asda had adopted the strapline "Be a real spec saver at ASDA" in order to deliberately trade off Specsavers' reputation for value for money.  Further, the use made of the strapline qualified as infringement pursuant to Article 9(1) (c) of the Regulation governing Community trade marks.

However, he rejected Specsavers' other claims for infringement, including that use of the strapline "Spec savings at ASDA" infringed Specsavers' trade marks and that use of the name ASDA, in a logo format similar to that used by Specsavers, infringed the latter's trade marks.  

Specsavers appealed the judge's rejection of its unsuccessful claims and ASDA cross appealed against the finding of infringement by the first strapline.

The Court of Appeal decided that Asda adopted both of the straplines "Be a real spec saver at ASDA" and "Spec savings at ASDA" in order to deliberately trade off Specsavers' reputation for value for money.  Further, the use made of the straplines qualified as infringement pursuant to Article 9(1) (c) of the Regulation governing Community trade marks.  In addition, its use of the name ASDA, in a logo format similar to that used by Specsavers, also infringed the latter's logo trade marks, particularly as it formed part of a composite campaign where ASDA deliberately looked to trade off Specsavers' reputation for value for money.  

Key legal points that come out of the Court of Appeal's decision include:

• In a registered trade mark case, when assessing the likelihood of confusion arising from the use of a sign, a Court must take into account all the circumstances of that use that are likely to operate on an average consumer's mind when considering the sign and the impression it is likely to make on him.  The sign is not to be stripped of its context.  Thus, a Court must not look only at the two signs in issue and nothing else.  It must consider the context and circumstances in which use has been made of the allegedly infringing sign.  [Does this mean that the test for infringement, pursuant to Article 9(1) (b) of the Regulation, is now very similar to when a Court is determining whether there has been a 'misrepresentation' in a passing-off case?];
• European trade mark law is not clear on the issue of whether a mark registered in black and white (without any formal limitation of colour) is registered in respect of all colours and, thus, if it is used extensively in a particular colour by the trade mark owner whether this fact can be taken into consideration when assessing trade mark infringement by a defendant.  The Court of Appeal thus decided to refer relevant questions to the Court of Justice;
• In a registered trade mark infringement case a Court can take into consideration the intention of a defendant, when using a sign, of looking to associate itself with the values of another registered trade mark owner's mark; and 
• European trade mark law is not clear as to whether use of a graphic device mark and a word mark together (both of which are separately registered as trade marks) is sufficient to qualify as use of each of the marks separately - and thus prevents them being revoked on non use grounds.  The Court of Appeal thus decided to refer relevant questions to the Court of Justice. 

Overall, it may be argued that the case asks more questions than it answers.  We will now have to wait for the guidance of the Court Of Justice before things become clearer.

If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners. 

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