Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 24 (31 January 2012)

Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 24 (31 January 2012)

The Court held that the average consumer would not be confused by Asda's logo or straplines, given the differences in wording, context, and presentation. The use of the Asda logo and straplines did not infringe Specsavers' registered trade marks under Article 9(1)(b) or (c), nor did it amount to passing off. The Wordless logo mark was validly revoked for non-use.

Citation
[2012] EWCA Civ 24
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
Appeal / Court of Appeal (civil Division), Appeal From High Court (chancery Division, Intellectual Property)
Outcome
Appeal dismissed; cross-appeal allowed in part
Legal Topics
Trade Mark Infringement, Passing Off, Comparative Advertising, Likelihood of Confusion, Revocation for Non Use
Intellectual Property Trademark Law Trade Mark Infringement Passing Off Comparative Advertising Likelihood of Confusion Revocation for Non Use

Case Brief

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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 / Court of Appeal (civil Division), Appeal From High Court (chancery Division, Intellectual Property)

Legal Issues

  1. 1 Whether Asda's marketing campaign infringed Specsavers' registered trade marks under Article 9(1)(b) and (c) of Council Regulation 207/2009/EC
  2. 2 Whether Asda's use of straplines and logo amounted to passing off
  3. 3 Whether the Wordless logo mark should be revoked for non-use

Ratio Decidendi

The Court held that the average consumer would not be confused by Asda's logo or straplines, given the differences in wording, context, and presentation. The use of the Asda logo and straplines did not infringe Specsavers' registered trade marks under Article 9(1)(b) or (c), nor did it amount to passing off. The Wordless logo mark was validly revoked for non-use.

Court Disposition

Appeal dismissed; cross-appeal allowed in part

Orders

  • No infringement found under Article 9(1)(b) or (c) for Asda logo or straplines
  • Revocation of Wordless logo mark for non-use upheld