Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd

The Court held that Asda's first and second straplines, as well as the Asda logo when used as part of the composite campaign, infringed Specsavers' Word marks and Shaded/Unshaded logo marks under Article 9(1)(c) by taking unfair advantage of Specsavers' reputation. There was no infringement under Article 9(1)(b) as there was no likelihood of confusion. The revocation and infringement of the Wordless logo mark were stayed pending a reference to the Court of Justice on the issues of use and the relevance of colour.

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
31 January 2012
Procedural Posture
Civil Appeal (intellectual Property) / Court of Appeal Judgment on Appeal From High Court
Outcome
Appeal allowed in part; cross-appeal dismissed; reference to the Court of Justice on specific questions; stay on revocation and infringement of Wordless logo mark.
Legal Topics
Trademark Infringement, Passing Off, Non Use Revocation, Comparative Advertising
Intellectual Property Trademark Law Trademark Infringement Passing Off Non Use Revocation Comparative Advertising

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 30 Party arguments 2 Amounts and remedies 2
Sign in to unlock

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

Civil Appeal (intellectual Property) / Court of Appeal Judgment on Appeal From High Court

Legal Issues

  1. 1 Whether Asda's marketing campaign infringed Specsavers' registered trademarks under Article 9(1)(b) and (c) of Regulation 207/2009/EC
  2. 2 Whether the Wordless logo mark should be revoked for non-use
  3. 3 Whether the use of colour and cumulative campaign elements affect the likelihood of confusion or unfair advantage

Ratio Decidendi

The Court held that Asda's first and second straplines, as well as the Asda logo when used as part of the composite campaign, infringed Specsavers' Word marks and Shaded/Unshaded logo marks under Article 9(1)(c) by taking unfair advantage of Specsavers' reputation. There was no infringement under Article 9(1)(b) as there was no likelihood of confusion. The revocation and infringement of the Wordless logo mark were stayed pending a reference to the Court of Justice on the issues of use and the relevance of colour.

Court Disposition

Appeal allowed in part; cross-appeal dismissed; reference to the Court of Justice on specific questions; stay on revocation and infringement of Wordless logo mark.

Orders

  • Specsavers' appeal allowed regarding infringement of the second strapline and Asda logo under Article 9(1)(c).
  • Specsavers' appeal dismissed regarding infringement under Article 9(1)(b).