Specsavers International Healthcare Ltd. & Ors v Asda Stores Ltd.

For trade mark infringement, signs must be assessed in their actual context and by their overall impression. Evidence that a defendant designed a sign by starting with another mark and moving to a perceived safe distance may support a confusion case, but it does not replace the objective assessment. A registered mark unlimited as to colour must be compared with the allegedly infringing sign without importing the proprietor’s actual colour usage. Under Article 9(1)(c), calling a mark with a reputation to mind, obtaining an advantage, and using that reputation intentionally may amount to unfair advantage even where there is no confusion. Competitive comparison does not automatically justify such use. Passing off still requires a likely misrepresentation as to trade origin.

Specsavers alleged that Asda’s opticians branding and advertising infringed its Community trade marks and amounted to passing off. The challenged material comprised a logo using touching ovals, the strapline Be a real spec saver at Asda, and the strapline Spec savings at ASDA. Asda denied infringement and challenged Specsavers’ wordless logo for non-use. The central issues were whether the signs created a likelihood of confusion or association, whether they took unfair advantage of or caused detriment to marks with a reputation, and whether they misrepresented Asda’s business as connected with Specsavers.

1. Non-use. The wordless logo was revoked. Its licensed use in a board game was not genuine use in connection with the registered goods or services. Use of the worded logo did not constitute use of the wordless logo because adding the word altered the logo’s distinctive character and consumers would perceive the worded form as an overall composite mark.
2. Article 9(1)(b). The Asda logo did not create a likelihood of confusion or association. The ovals were materially different because they touched rather than overlapped, the wording was equally significant, Asda’s name was prominent, and the signs were encountered in an Asda context. The two straplines were signs within the wider advertising material. Although spec saver was similar to Specsavers, the first strapline was understood as a play on words and comparison, not an indication of commercial origin or connection. The second strapline was too dissimilar. The cumulative use also failed to establish confusion or association.
3. Evidence that Asda had started with the Specsavers logo and moved to what it regarded as a safe distance was admissible as limited supporting evidence. The decisive question remained whether the final signs were objectively likely to confuse or associate.
4. Article 9(1)(c). The first strapline called the Specsavers mark to mind, gave Asda an advantage by invoking Specsavers’ reputation for value, and did so intentionally. It therefore took unfair advantage of the mark’s distinctive character and repute. No detriment was established. The second strapline and the logo did not create a sufficiently strong link or unfair advantage.
5. Passing off. The branding did not misrepresent Asda’s goods or business as Specsavers’ goods or business. The prominent Asda branding and the absence of evidence of relevant misrepresentation were decisive.
6. The trade mark claim therefore succeeded only in respect of the first strapline under Article 9(1)(c). The passing-off claim failed. Liability was determined, with damages and the consequences of the admitted misuse of confidential information left for later inquiry.