Specsavers International Healthcare Limited & others and Asda Stores Limited
(2010) EWHC 2035 (Ch) 30th July 2010
A watchful eye on the High Court sees a recent ruling in a trade mark dispute between Asda Supermarket and Specsavers opticians.
Specsavers has Community Trade Mark protection for the word SPECSAVERS and related logos.
The optician set its sights on the supermarket after Asda launched a campaign for its own in-store optician services. It used the straplines "be a real spec saver at Asda" and "spec savings at Asda".
Specsavers, alleged passing off and trade mark infringement but had Asda done enough to escape liability?
Passing off: It was not disputed that Specsavers had goodwill but the materials carried too much Asda branding to amount to misrepresentation.
Infringement: Specsavers claimed infringement on the basis of a likelihood of confusion and/or unfair advantage or detriment. Judgement was favourable to Specsavers but only in part.
There was no infringement resulting from the use of the logos. There was held to be no likelihood of confusion resulting from either strapline and therefore no infringement here either. Even with the closer of the two ("be a real spec saver at Asda") the average consumer would realise that the slogan was a play on words, not a reference to a new commercial relationship. It was a comparison, rather than an equation.
However, "be a real spec saver at Asda" was held to infringe on the basis that Asda was gaining an unfair advantage. "spec saver" was considered to call to mind the claimants' "SPECSAVERS" trade mark and Asda was considered to benefit by drawing on the reputation already established by Specsavers' brand. Whilst the underlying theme in Asda's activities was competitive advertising it did not present a straight comparison of objectively verifiable terms. It was not using "Spec" and "saver" only to identify its competitor but as a reference to the qualities inherent in the Specsavers brand i.e. value. The use was therefore considered unfair. The strapline "spec savings at Asda" would be regarded as pure pun, and so did not infringe.