Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd

An injunction is preventive, not punitive. It may therefore be granted only where a threat or risk of further wrongdoing exists. Once infringement of an intellectual property right is established, a general injunction protecting the right will often be appropriate. Its scope must nevertheless be proportionate, fair to the defendant and as clear as the circumstances permit.

Costs in intellectual property proceedings are governed by the ordinary civil procedure rules. The court should identify the overall winner and adopt an issue-by-issue approach so far as reasonably practicable, while recognising that precise attribution of costs is rarely possible. Partial success, conduct and settlement offers may justify a percentage reduction. The court may also order a payment on account before detailed assessment where the sum is one the successful party will confidently recover.

Following its principal judgment in [2012] EWCA Civ 24, the Court of Appeal determined the outstanding questions of relief, permission to appeal and costs. The appeal arose from the decision of Mann J, [2010] EWHC 2035 (Ch), in proceedings concerning an advertising campaign which infringed registered Community trade marks under article 9(1)(c) of the Community Trade Marks Regulation.

The remaining issues were whether the injunction should restrain infringement generally or only the particular offending uses, whether Asda should receive permission to appeal to the Supreme Court, and how the costs of the appeal and trial should reflect Specsavers' partial success, its losses on other issues and its response to a Part 36 offer.

1. Injunction granted in the general form sought. The jurisdiction under section 37(1) of the Senior Courts Act 1981 is preventive. An injunction requires a threat or risk of future infringement and must be appropriate, proportionate and drafted as clearly as the circumstances permit. Where registered trade mark infringement has been established, a general injunction will often be proper because it protects against unforeseeable variants of the offending activity. Each case nevertheless depends on its facts, and the order must not extend further than necessary.

2. The parties remained competitors, the campaign had deliberately targeted Specsavers, and Asda had offered no open undertaking concerning future marketing. There was a reasonable apprehension that variants of the straplines or logo might be used in other infringing ways. The agreed proviso preserved lawful comparative advertising. The general injunction was therefore necessary, proportionate and consistent with the court's earlier direction.

3. Permission to appeal to the Supreme Court refused. Intellectual property cases are governed by the ordinary principles applicable to injunctions. The proposed appeal disclosed no distinct fundamental issue concerning the scope of intellectual property injunctions.

4. Costs awarded subject to substantial reductions. The ordinary principles in CPR rule 44.3 apply to trade mark proceedings. The court should identify the overall winner and use an issue-by-issue approach so far as reasonably possible, while taking account of partial success, conduct and admissible settlement offers. Specsavers was the overall winner because it established that all aspects of the campaign infringed under article 9(1)(c), although it lost substantial issues under article 9(1)(b), passing off and other matters. Its failure to engage with Asda's Part 36 offer also justified a reduction.

5. Asda was ordered to pay 40% of Specsavers' appeal costs and 50% of its first-instance costs, subject to assessment on the standard basis if not agreed. Costs attributable to questions referred to the Court of Justice were reserved. Asda was also ordered to pay £293,835 on account within 28 days, being sums the court was confident Specsavers would recover on assessment.

1. Court of Appeal (Civil Division): In [2012] EWCA Civ 494, granted the general injunction sought, refused permission to appeal to the Supreme Court, awarded Specsavers 40% of its appeal costs and 50% of its first-instance costs, ordered payments on account, and reserved costs attributable to referred issues.
2. Court of Appeal (Civil Division): In the principal judgment, [2012] EWCA Civ 24, determined the substantive infringement issues, while leaving the precise injunction, permission and costs for later determination.
3. High Court, Chancery Division: Mann J decided the underlying trade mark proceedings in [2010] EWHC 2035 (Ch) and reserved the trial costs until after the damages inquiries or accounts of profits.