ASDA's advertising found to take unfair advantage of Specsavers' trade marks  

Specsavers v ASDA [2010] EWHC 2035 (Ch)  

The High Court has held that one of ASDA's marketing straplines used to promote its in-store optician took unfair advantage of Specsavers' Community Trade Marks (CTM) under Article 9(1)(c) of the CTM Regulation, but rejected its infringement claims made under Article 9(1)(b) and for passing-off.  

The case provides further guidance on the application of Article 9(1)(c), following the ECJ's ruling in L'Oreal v Bellure, but suggests a fairly narrow interpretation of "unfair advantage" by the UK courts. The judgment also comments at length on the value of, and potential pitfalls involved in, different types of evidence which are commonly deployed in trade mark infringement, and passing off claims.  

Business Impact  

  • The case demonstrates the difficulties brand owners can face in trying to restrain competitive marketing they perceive as unfairly taking advantage of their brand. The English courts would again appear to favour a narrow interpretation of unfair advantage under Article 9(1)(c). This will come as a disappointment for brand owners who hoped that the ECJ's ruling in L'Oreal v Bellure would provide greater scope for protecting their rights in such cases. The decision also suggests that the prominent use of a supermarket's own brand (and by analogy any well-known brand) in marketing materials continues to act as a powerful defence to infringement in many circumstances.  
  • The decision does, however, still act a cautionary reminder to would-be infringers of the risks associated with "riding on the coat tails" and building unfairly on a well-known competitors' reputation, even where the would-be infringer is itself a well known brand.  
  • Parties to this type of litigation should consider carefully what type of evidence to adduce, and how to best formulate and manage any evidence gathering exercise. Evidence that goes to the subjective intentions of an alleged infringer is prima facie irrelevant to determining a likelihood of confusion under Article 9(1)(b). However, there is still limited scope for evidence demonstrating that the alleged infringer was "living dangerously" in devising its marketing material. Such evidence may also help evidence a 'link' between the mark and the sign under Article 9(1)(c).  
  • Claimants and defendants alike should always carefully design and tailor any survey evidence to focus on the core issues in hand, such that the results are informative and meaningful, and less open to criticism by the Courts. Parties should also seek permission of the Court before preparing and adducing any survey evidence.  

Background

The case concerned a marketing campaign used by supermarket ASDA in 2009 to relaunch its in-store optician service. ASDA deployed various marketing materials in-store and on its website, including the slogans "Be a real spec saver at Asda" and "Spec savings at Asda", and a logo consisting of a pair of touching oval shapes with the words "ASDA Opticians" across them. In all except one "recall" flyer, the ovals were white and the writing in ASDA's corporate green colour.  

Specsavers, the well-known chain of high-street opticians objected to ASDA's campaign, and launched proceedings for trade mark infringement under Articles 9(1)(b) and (c) of the CTM Regulation, and for passing-off. Specsavers held various CTMs including word marks for SPECSAVERS, and logo marks depicting two overlapping oval shapes, with the word Specsavers across them. The logo marks were not registered for any particular colour, although in practice Specsavers used dark green ovals, with white lettering.  

Trade mark infringement under Article 9(1)(b)  

In respect of the logo, Mr Justice Mann held that there was a degree of similarity, but this was lessened significantly by the fact Specsavers' ovals overlapped, but ASDA's only touched. Furthermore, the fact ASDA's very well-known name appeared in one of the ovals, also led to a very different overall impression and no confusion. The Judge said this was reinforced both by the location of the adverts (within ASDA's stores and on its own website), and the colouration used, which was the opposite way round to Specsavers' (lighter text on a dark background).  

In relation to the straplines, although there was a close similarity between SPECSAVERS and "spec saver" in the first, the context of it being a play on words, again with ASDA's brand name featuring prominently, meant the relevant consumer would not be confused or associate it with Specsavers. Mr Justice Mann came to the same conclusion for the second strapline, which he considered much weaker than the first.  

Evidence of Confusion

In drawing these conclusions, Mr Justice Mann relied primarily on his own assessment (from the point of view of a relevant consumer), rather than the parties' evidence, which was scrutinised at length.  

Specsavers adduced three different types of evidence in support of its claims under Article 9(1)(b): i) witness evidence of actual confusion, ii) the results of survey evidence, and iii) factual evidence that ASDA was "living dangerously" in devising its marketing material to be as close as safely possible to Specsavers' marks. ASDA in turn adduced its own form of survey/witness evidence to show there was no likelihood of confusion.  

Mr Justice Mann was particularly critical of the survey evidence. Specsavers' survey was carried out on a high street, in sight of an ASDA store with an optician. People were stopped and asked "If I wanted to buy a pair glasses made by Specsavers, do you know where is the nearest place that I could get them?". 6% of the 244 interviewed answered ASDA, from which Specsavers inferred that confusion had been caused by the adverts. Mr Justice Mann criticised the approach taken, emphasising that the question(s) asked should have been much more focused on the campaign and marketing materials in issue. There was also no expert evidence to back up any inferences drawn, no cross-examination, nor a control survey. The Judge found the survey left "a lot of important questions unanswered" and no real weight was given to it as a result.  

ASDA in turn conducted a "witness collection exercise", interviewing 600 people in various ASDA stores generally about the appearance of the optical store. ASDA used a filtering process, selecting those who would be willing to give a witness statement and also attend court. These individuals were then asked specifically about the ASDA mark and Specsavers and the eventual 11 'selected' through this filtering process all said they would not be confused. The Court rejected ASDA's assertion that this sample of 11 was representative of the public, as they were only a small percentage of the number originally approached, and there was no indication of the views of the remainder. Again, very little weight was given to this evidence.  

The judgment reflects an increasingly common pattern, seen in recent cases such as the Vodkat passing-off case, of courts treating with caution, or even rejecting, survey-type evidence. Often very expensive to obtain, all too often such surveys are viewed as being based on incorrect questions or assumptions, and providing unhelpful or irrelevant responses. The case also acts as a reminder of the requirement for parties to seek the directions of the court in advance of trial as to the scope or methodology of any proposed survey they may wish to put in evidence.  

Another very interesting aspect of the decision is the consideration given to what is referred to in the judgment as the "living dangerously" evidence. In particular, this evidence showed that ASDA had used the Specsavers logo as a starting point and then moved away from it to what it considered (upon legal advice) a "safe design distance". Specsavers argued that this should be taken into account when assessing confusion.  

Mr Justice Mann, whilst stressing that the test for likelihood of confusion is an objective one, so intention is prima facie irrelevant, did find that there was limited place for such evidence in support of a case for confusion. If there is clear evidence that an infringer adopted his mark because he thought it likely to lead to some sort of "beneficial confusion" with another mark this would be admissible, but not conclusive, on the question of actual confusion.  

Trade mark infringement under Article 9(1)(c) post L'Oreal v Bellure

The case also indicates that the English Courts are unwilling to entertain the wider interpretation of "unfair advantage" brand owners might have hoped for following the ECJ's decision in L'Oreal v Bellure.  

The Court shied away from an interpretation that any use of a sign which is sufficiently similar to a mark with reputation for a link to be established that obtains any commercial boost or advantage, is an unfair advantage. Following the Court of Appeal's reasoning in Whirlpool v Kenwood, Mr Justice Mann emphasised that something more than mere advantage is required, and crucially it must always be unfair. Mr Justice Mann further suggested that an advantage may be de facto rendered unfair if it is intended (as it was in L'Oreal).  

The first strapline, with its intentional use of "spec savers", was found to be riding on Specsavers' coat-tails, building on the claimant's reputation for value in an unfair way. This finding will please brand owners, particularly as the Judge firmly dismissed any notion that a well-known brand cannot be found to take unfair advantage of another well-known brand. The second strapline, containing "spec savings" contained a much weaker link between the mark and sign, however, meaning unfair advantage was much less likely – this strapline did not ride on the concept of Specsavers as a value provider like the first.  

In relation to the logo, Mr Justice Mann said that if it were not for the "living dangerously" evidence, there would have been no link whatsoever between the mark and sign. The fact that the design team behind the logo thought it would have a resonance with Specsavers served as evidence that the sign would "bring to mind" the registered mark. This finding suggests that an intent to imitate, or sail close to the wind, can be used as evidence of unfair advantage. However, on the facts this was again countered strongly by the presence of ASDA's own name on the logo; consequently the logo did not infringe Article 9(1)(c).  

Passing-off

The claim for passing-off was quickly dismissed. Even considering the effect cumulatively, the Judge held that the signs did not constitute a requisite misrepresentation – the logo was plainly ASDA's, they were displayed in ASDA's own stores and each of the straplines contained ASDA's name. The "living dangerously" evidence was taken into account; however Mr Justice Mann held that ultimately ASDA's intention was not to misrepresent that its optician offering was that of Specsavers', but only to invite favourable comparisons. It is open to debate as to whether stronger survey and witness evidence might have assisted Specsavers case here.