Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 494 (26 April 2012)

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 494 (26 April 2012)

A general form of injunction is appropriate and proportionate to prevent further trade mark infringement by Asda, given the history and risk of future infringing conduct. Specsavers is the overall winner but not on all issues; therefore, costs are apportioned accordingly. Permission to appeal is refused as the legal principles are settled and properly applied.

Citation
[2012] EWCA Civ 494
Parties
Appellant/claimant: Specsavers International Healthcare Ltd; Appellant/claimant: Specsavers BV; Appellant/claimant: Specsavers Optical Group Ltd; Appellant/claimant: Specsavers Optical Superstores Ltd; Respondent/defendant: Asda Stores Ltd
Jurisdiction
England and Wales
Judgment Date
26 April 2012
Procedural Posture
Appeal (civil) / Post Judgment (injunction Wording, Permission to Appeal, Costs)
Outcome
Injunction granted in general form; permission to appeal refused; costs awarded to Specsavers with apportionment.
Legal Topics
Trade Mark Infringement, Injunctions, Costs Orders, Comparative Advertising, Appeals
Intellectual Property Civil Procedure Trade Mark Infringement Injunctions Costs Orders Comparative Advertising Appeals

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Parties

Specsavers International Healthcare Ltd

Appellant/claimant

Specsavers BV

Appellant/claimant

Specsavers Optical Group Ltd

Appellant/claimant

Specsavers Optical Superstores Ltd

Appellant/claimant

Asda Stores Ltd

Respondent/defendant

Procedural Posture

Appeal (civil) / Post Judgment (injunction Wording, Permission to Appeal, Costs)

Legal Issues

  1. 1 Whether a general form of injunction should be granted to restrain further trade mark infringement by Asda
  2. 2 Whether permission to appeal to the Supreme Court should be granted
  3. 3 How costs should be apportioned between the parties

Ratio Decidendi

A general form of injunction is appropriate and proportionate to prevent further trade mark infringement by Asda, given the history and risk of future infringing conduct. Specsavers is the overall winner but not on all issues; therefore, costs are apportioned accordingly. Permission to appeal is refused as the legal principles are settled and properly applied.

Court Disposition

Injunction granted in general form; permission to appeal refused; costs awarded to Specsavers with apportionment.

Orders

  • Injunction granted in terms proposed by Specsavers, including 'or otherwise howsoever' and a proviso for lawful comparative advertising.
  • Asda to pay Specsavers 40% of its costs of the appeal and 50% of its costs at first instance, to be assessed on the standard basis if not agreed.