Specsavers has successfully established that Asda infringed its community trade mark for the word "SPECSAVERS" by Asda's use of the tagline "Be a real spec saver at Asda" during its 2009 campaign to promote its in-store opticians.

The judge held that although use of this tagline did not lead to a likelihood of consumer confusion, Asda did obtain an advantage from the reference it made to the Specsavers mark.

The evidence showed that Asda's reference to the Specsavers mark was intentional and so the advantage was held to be unfair. Accordingly, trade mark infringement was established under Article 9(1)(c) of the Community Trade Mark Regulation but not under Article 9(1)(b).

In addition to the infringing tagline, Asda had also used a logo mark of two non-intersecting ovals with the words "ASDA" and "OPTICIANS" placed in the respective ovals and a second tagline "Spec savings at Asda". Specsavers alleged infringement of its device mark of two intersecting ovals with "SPECSAVERS" placed across them, as well as its word marks, but lost these arguments. Asda also successfully challenged the validity of one of Specsavers' device marks which was a depiction of the two intersecting ovals without any wording.

Factual background

Asda has, for some time, had its own opticians in some (but not all) of its large stores. In October 2009 it decided to re-launch those services which resulted in a marketing campaign featuring the logo and straplines referred to. The logo was used principally, but not exclusively, in Asda stores and on the Asda website. In the stores the logo appeared on posters and on boards above the optical section. The straplines were used on various posters and other materials. The straplines were used for a few weeks at the end of 2009. Their use was mainly stopped as a result of a court hearing on 3rd November.

Specsavers alleged that the use by Asda of the above tag lines and logo infringed its Community Trade Marks for the SPECSAVERS word and its various marks for the intersecting ovals logo both with and without the SPECSAVERS word.

Significance

This is the first case to consider the extended protection offered to trade marks with a reputation under the Trade Marks Act 1994 and the Community Trade Marks Regulation following the Court of Appeal's application of the guidance given by the Court of Justice of the European Union (CJEU) in the landmark L'Oreal v Bellure case.

Although this High Court judgment does not develop the law much further in this area and arguably even confuses it, it also brings into sharp focus the practical difficulties of proving ones case for those wishing to rely on the extended infringement protection in the UK courts.

Likelihood of confusion

Specsavers followed the approved route for obtaining permission to adduce survey evidence in an attempt to provide evidence of a likelihood of confusion. The late Pumfrey J (as he then was) initiated in O2 Ltd v Hutchison 3G Ltd [2005] ETMR 61 the practice of obtaining pre-approval for survey evidence which was subsequently followed by Rimer J in U K Channel Management Ltd v E! Entertainment Television Inc [2008] FSR 5 and approved by the Court of Appeal in esure Insurance Ltd v Direct Line Insurance Plc [2008] EWCA Civ 842 (23 July 2008). Under this practice, case management directions are given at an interim stage, requiring the parties to seek the directions of the court as to the scope or methodology of any proposed consumer survey that the parties may desire to put in evidence at trial. Those directions can then be given in advance of the trial (see, for example, the further proceedings in the U K Channel Management case given by Lewison J, [2007]EWHC (Ch).

The Specsavers survey was carried out shortly after the relevant Asda campaign and showed that 6% of the sampled consumers believed that Specsavers' glasses could be obtained from Asda. However, the judge concluded that this evidence was of no assistance to him primarily because, in his view, the survey evidence did nothing to demonstrate that the use of any of the taglines/logo in issue were the cause of this mistaken belief. Asda's legal team did not follow the approved route for obtaining permission to adduce survey evidence and simply adduced evidence from a so-called in store witness collection exercise of about 600 interviewees. This resulted in evidence from 10 witnesses at the trial intended to demonstrate an absence of confusion. Surprisingly, the judge, using his discretion allowed the evidence in but less surprisingly also rejected its value.

In the end the judge, solely on the basis of his own global assessment of the relevant factors, concluded that none of the relevant signs alone or in combination resulted in a likelihood of confusion as to the origin of Asda's glasses and optician services or any economic link between these and Specsavers.

Taking unfair advantage

In respect of taking unfair advantage of the reputation and goodwill of the mark, the judge found that the utility of having the Specsaver brand as a reference point for consumers to convey to them that Asda's offering was good value did amount to taking an advantage. The judge then considered whether such advantage was unfair. In this case the evidence of the lead-up to the use of the Specsavers mark was crucial and demonstrated that Asda had targeted the Specsavers brand and was aiming to take such advantage. Consequently the judge held, in relation to the tagline only, that Asda had taken unfair advantage of the Specsavers' mark.

It is worth noting that Asda did seek and obtain in-house legal clearance for their intended "Be a real spec saver" tag-line and this did not shield it from a finding of "unfair" advantage taking.

Mann J said: "I do not think that it was the intention of Asda to live dangerously in the sense of creating the possibility of confusion or association (in a sense relevant to Article 9(1)(b)). The key is parody and a play on words. This was not done in order to create an association [in that sense]. Rather, it was to create a comparison. When legal advice was taken, it ...was to check that the chosen slogans were safe... Accordingly, so far as [the slogans are] concerned, Specsavers' case is not fortified by the "living dangerously" point, but its intention is still relevant to the claim under Article 9(1)(c)."

It has already been noted that judge found that the infringement claims made against the second tag line and the logo all failed. However the judge's finding on the Asda non-intersecting ovals logo and unfair advantage taking is interesting, if rather odd.

He accepted that the Asda logo resonated to a limited degree with the Specsaver intersecting ovals logo mark and he held that "although there is probably just a calling to mind...of the very weak variety...That is evidence of a link". He also noted "... it might be thought to carry some advantage (that would, after all, be the purpose of going for an association)". However, he concluded that the advantage was "too slight to be unfair notwithstanding that it might be thought to have been intended" [our emphasis].

There is no express minimum standard for the amount of advantage that must be obtained in the Community Trade Mark Regulation or the 1994 Act or any indication that if it is too small it will not be considered unfair. Furthermore, there are problems with this approach - where is the line to be drawn?

Detriment and dilution

Specsavers also ran a case to the effect that the "real spec saver" tagline was detrimental to its mark. It argued this in two ways:

a. it was "self evident" that any attempt to pull Asda up in the market by reference to a superior Specsavers brand pulls Specsavers in the opposite direction; and/or

b. the Specsavers marks become less distinctive in the market where they are aped and where too many marks look the same (i.e. dilution).

The judge however concluded that there was "no real evidence about this" other than "the shortly expressed views" of Specsavers' marketing director and this was insufficient in the light of what the CJEU said in Intel Corporation Inc v CPM United Kingdom (C-252/07)(the Intelmark case) which was that:

"... proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future."

The judge said he was "not prepared to infer [such a change in the economic behaviour of consumers] from the material I have seen".

However, there was no such "real" evidence that Specsavers had in fact obtained an advantage from its use of the "spec saver" tag line either (other than the documents that revealed Asda intended the link to be made and the value connection to be appreciated by consumers).

Despite this, the judge succinctly inferred that this tagline would call the Specsavers marks to mind. He did so from his own assessment of the reputation of the mark, the similarity of the tagline and the mark, the identically of the goods and services and the intentional "word play" of Asda. Similarly, he inferred from the materials available to him that the Specsaver's reference point would confer an advantage on Asda .

The contrast in approach between these two heads of claim is difficult to reconcile.

Comment

The courts in the US have been struggling with what evidence is needed to establish dilution infringement for many years. It is only since November 2008 that the UK courts have started to properly grapple with the concept of infringement without confusion as to origin. In November 2008 the CJEU forced the UK courts to accept that there could be infringement where there was no likelihood of consumer confusion whatsoever as to the origin of the goods in question or as to any trade connection (consumers need not even be caused to "wonder" whether there is trade connection - see Jacob LJ paragraph 30 in the Intel case at the Court of Appeal[2007] EWCA Civ 431 (15 May 2007). It is therefore unsurprising that the UK courts still appear reluctant to make a finding of infringement by dilution.

However, despite what several commentators have suggested, it is unlikely that when requiring "evidence" of a serious likelihood of a change in the economic behaviour of consumers that the CJEU had in mind the sort of concrete/real proof that a UK lawyer might expect.

The following forms of real evidence are, of course, all worth considering putting forward in a dilution case: (a) records showing a down-turn in sales apparently attributable to the defendant's use of its similar/identical sign; and/or (b) a market survey showing not just that consumers made the mental link but this resulted in them being less inclined to purchase the claimant's goods or purchase them at a premium price point; and/or (c) an independent report from a branding / marketing expert concluding that this would be the result.

However, all these forms of real evidence are costly and hard to obtain even in what would appear to be the strongest of dilution cases. Furthermore, each of them may be vulnerable to judicial criticism. The sorts of criticisms which are often levelled at this sort of evidence in the UK courts include:

  • The sales downturn was caused by changing market conditions, the claimant's ineffective advertising in that period, the acts of third parties on the market or anything else other than the defendant's uses of its similar sign;
  • The survey related to an insufficient sample, the questions were leading, the context was unrealistic, there were not sufficient controls and the percentage resulting was insufficient etc.

Finally, the UK court's attitude to branding/marketing expert reports is often decidedly sceptical if not dismissive - see Lewsison J's comments on the minimal value of L'Oreal's brand expert's report in L'Oreal SA & Ors v Bellure in the High Court ([2006] EWHC 2355 (Ch) (04 October 2006).

Also, all three judges in the Court of Appeal in esure Insurance Ltd v Direct Line Insurance Plc [2008] EWCA Civ 842 (23 July 2008) made it very clear that expert evidence would rarely be of any value on issues relating to the perception of the average consumer (i.e. whether the use of the similar sign was likely to lead the average consumer to bring the mark to mind and /or confuse the two). "Firstly, given that the critical issue of confusion of any kind is to be assessed from the viewpoint of the average consumer, it is difficult to see what is gained from the evidence of an expert as to his own opinion where the tribunal is in a position to form its own view. That is not to say that there may not be a role for an expert where the markets in question are ones with which judges are unfamiliar: see, for example, Taittinger SA v Allbev Ltd [1993] FSR 641. However, the evidence of [the branding expert] on confusion was of no weight in this case: he merely gave evidence as to his own opinion about a market which would be familiar to judges" Arden LJ.

However the CJEU guidance in the Intelmark case may be read as indicating that a serious likelihood of a change in consumers' economic behaviour can be legitimately inferred from a global assessment of the relevant factors without such evidence - see paragraphs 67 and 68 of that decision:

"[However] The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark...

[Therefore] like the existence of a link between the conflicting marks, the existence of one of the types of injury referred to in Article 4(4)(a) of the Directive, or a serious likelihood that such an injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the criteria listed in paragraph 42 of this judgment... "

Therefore, CJEU confirmed in paragraph 68 that the relevant criteria /factors (listed in paragraph 42) include the familiar:

  • degree of similarity between the conflicting marks;
  • nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
  • strength of the earlier mark's reputation;
  • degree of the earlier mark's distinctive character, whether inherent or acquired through use; and

This approach would be logically consistent with the accepted assumption that harm to the essential (badge of origin) function will flow from the establishment of a likelihood of confusion as to the origin of the goods. Although evidence of actual instances of confusion and survey evidence indicating consumer confusion is helpful, infringement can be, and often is, established under section 10(2) of the 1994 Act (Article 9(1)(b) of the Community Trade Mark Regulation) by the UK courts without such evidence, following the judge's own global assessment of the relevant factors.

The legitimacy of this approach was confirmed by the Court of Appeal in the esure case referred to: "What the hearing officer had to determine was what the average consumer would have thought of the two marks and whether they would have confused him. The services sold by the parties were identical and were of a kind familiar to members of the public. In those circumstances, I see no reason why the hearing officer should not have decided the issue of similarity on his own in the absence of evidence apart from the marks themselves and evidence as to the goods or services to which they were, or, in the case of esure's mark, were to be applied" - Arden LJ at paragraph 56

Furthermore the CJEU, in the Intelmark case, has made it clear that it is possible for a likelihood of confusion to exist in respect of use in relation to dissimilar goods where the mark has a strong reputation and that such confusion will be detrimental to the distinctive character of the mark. Why should an infringement case run on this basis under section 10(3)/Article 9(1)(c) require additional "real evidence" of a change in the economic behaviour of consumers, where it would not need such evidence if the goods were just on the right side of similarity and the case had been based on section 10(2)/Article 9(1)(b)?

An approach which enabled the establishment of dilution by inference from the global assessment of the relevant factors would also be in line with the direction of the recent developments in the US. There, legislation was enacted in 2006 to acknowledge the evidential difficulties even the proprietors of very famous trade marks were experiencing as a result of the Supreme Court's finding that "actual", as opposed to likely, dilution/tarnishing had to be established (in the Victoria's Secret case). The 2006 legislation made it clear that likely dilution was sufficient.

This new legislation was recently interpreted in the evisa summary judgment case (Visa International Service Association v. JSL Corporation - 28 June 2010) where the judge noted that a claimant "seeking to establish a likelihood of dilution is not required to go to the expense of producing expert testimony or market surveys, it may rely entirely on the characteristics of the mark at issue".