Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd

Likelihood of confusion under Article 9(1)(b) must be assessed globally through the eyes of the average consumer. The court must consider the sign in the circumstances of its actual use, including its surrounding advertising and any composite campaign. The assessment must nevertheless remain founded on the registered mark.

Article 9(1)(c) requires a link with a reputed mark and one of the specified forms of injury. A competitor takes unfair advantage where it deliberately invokes that mark through an unsubstantiated, non-objective comparison to exploit its attraction and reputation without compensation or due cause. The cumulative effect of campaign elements may strengthen an otherwise weak link. A conscious decision to approach a competitor’s branding is relevant but does not itself establish confusion.

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd concerned a marketing campaign for optical services. The campaign used two straplines deliberately referring to Specsavers and a logo comprising two ovals. Specsavers alleged infringement of its word, shaded, unshaded and wordless Community trade marks under Articles 9(1)(b) and 9(1)(c), together with passing off.

Mann J, in [2010] EWHC 2035 (Ch), found that the first strapline infringed the word marks under Article 9(1)(c). He dismissed the other infringement claims and revoked the wordless logo mark for non-use. Specsavers appealed those adverse findings, while Asda cross-appealed against the sole finding of infringement.

The principal questions were whether the campaign created a likelihood of confusion or took unfair advantage of the reputation of the registered marks, whether its elements had to be assessed cumulatively, and whether use of the combined word-and-device logo constituted use of the separately registered wordless device.

1. Appeal allowed in part; cross-appeal dismissed. Kitchin LJ, with whom Black LJ and the President of the Queen’s Bench Division agreed, held that the second strapline infringed the word, shaded and unshaded logo marks under Article 9(1)(c). The Asda logo also infringed the shaded and unshaded logo marks when used as part of the composite campaign. The judge’s finding that the first strapline infringed the word marks under Article 9(1)(c) was upheld.

2. For Article 9(1)(b), likelihood of confusion had to be assessed globally through the eyes of the average consumer. All circumstances of the actual use likely to affect the consumer’s perception were relevant. This included the complete advertisements, the context supplied by Asda’s prominent name, and the cumulative effect of the campaign. The assessment nevertheless remained founded on the registered marks. The wording and context dispelled any likelihood that consumers would believe the parties had the same or economically linked trade origins. The appeal under Article 9(1)(b) was therefore dismissed.

3. A decision to “live dangerously” was distinct from an intention to deceive. A market participant’s intention could be relevant because it might reveal an informed understanding of consumer reaction. It remained only one factor in the global assessment. On the evidence, Asda intended to evoke Specsavers and make a comparison, but did not intend to create confusion.

4. Article 9(1)(c) required a link between the sign and a reputed mark, followed by one of the recognised forms of injury. The existence of a link was necessary but insufficient. The court also had to consider whether any advantage was unfair and obtained without due cause. Legitimate comparative advertising and fair presentation of genuine alternatives could constitute due cause. Asda’s campaign made no objective comparison of verifiable features. Its deliberate use of the straplines invoked Specsavers’ reputation for value and exploited its marketing investment without compensation.

5. The second strapline was visually, aurally and conceptually similar to “Specsavers”. It created a link and gave Asda an unfair marketing advantage. The campaign’s cumulative effect also materially strengthened the resonance between the Asda logo and the shaded and unshaded logo marks. The Asda logo therefore took unfair advantage when used within that campaign, although its isolated use created only a weak link.

6. The court did not finally determine the revocation or infringement issues concerning the wordless logo. It stayed those issues pending a reference to the Court of Justice concerning use of a separately registered device within a composite mark and the relevance of colours associated through extensive use with a mark registered without a colour limitation.

1. Court of Appeal (Civil Division): In [2012] EWCA Civ 24, the court allowed Specsavers’ appeal concerning Article 9(1)(c) infringement by the second strapline and by the Asda logo when used in the composite campaign. It dismissed the Article 9(1)(b) appeal and Asda’s cross-appeal. The wordless-logo issues were stayed pending a reference to the Court of Justice.

2. High Court, Chancery Division: Mann J, in [2010] EWHC 2035 (Ch), held that the first strapline infringed the word marks under Article 9(1)(c), dismissed the remaining infringement and passing-off claims, and revoked the wordless logo mark for non-use.