Asda la Vista—Specsavers v Asda spectacle is over

In the final chapter of the long-running trade mark dispute between Specsavers and Asda, the Court of Appeal upholds Specsavers’ logo trade mark (Specsavers International Healthcare Ltd v Asda Stores Ltd (Registrar of Trade Marks Intervening) [2014] EWCA Civ 1294)

A brief history of Specsavers and Asda

This case is the final chapter in long-running trade mark litigation following Asda’s 2009 advertising campaign for its optical services which used a double oval shaped green and white logo similar to Specsavers’ green and white double oval logo. Following a claim for trade mark infringement bought by Specsavers, the High Court ruled largely in favour of Asda (though there was one finding of trade mark infringement) (see Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch)). Not only did Specsavers lose on most grounds of their infringement claim, they also faced revocation of their wordless logo mark (below) on the basis of non-use.

The wordless logo mark

The shaded logo mark

The matter progressed to the Court of Appeal who gave judgment on various aspects of Specsavers’ appeal. On the issue of Specsavers’ appeal against the order for revocation of the wordless mark, and in respect of the allegation that Asda’s logo infringed the wordless logo mark, the Court of Appeal made a reference to the Court of Justice of the European Union (CJEU) (see Specsavers International Healthcare Ltd v Asda Stores Ltd (No 2) [2012] EWCA Civ 494). The key issues before the CJEU were:

  1. Does use of the shaded logo mark constitute use of the wordless logo mark?
  2. Should the colour green, always used by Specsavers, be taken into account when assessing infringement of the wordless logo mark, even though it was registered in black and white?

The CJEU’s ruling is summarised below and considered in more detail in Lexis®PSL IP&IT News Analysis: CJEU rules on short-sighted Asda ad campaign in continued battle with Specsavers.

What is this latest instalment about?

Since the CJEU’s ruling in July 2013, the parties have settled their dispute but agreed that Specsavers was at liberty to pursue their appeal against the revocation order for the wordless logo issued by the High Court. This latest hearing solely concerned the wordless logo mark. Specifically, the Court of Appeal was to determine to what extent use of the shaded logo constitutes use of the wordless logo mark.

What guidance was given to the Court of Appeal by the CJEU?

Going back to the CJEU ruling of July 2013, it ruled that the condition of ‘genuine use’ of a trade mark within the meaning of Regulation (EC) 207/2009, arts 1(1) and 51(1)(a):

‘[…] may be fulfilled where a Community figurative mark is used only in conjunction with a Community word mark which is superimposed over it, and the combination of those two marks is, furthermore, itself registered as a Community trade mark, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.’ (para [31])

In other words, if a trade mark (in this case the wordless logo mark) has only be used as part of a composite mark (in this case the shaded logo mark), the use must nonetheless be such that the trade mark (the wordless logo mark) would, by itself, be perceived as an indication of origin. In addition, the CJEU ruled the court could take into account that the mark has always been used in a particular colour in so far as this relates to the perception of the mark by the average consumer.

What did the Court of Appeal decide?

In applying the CJEU’s ruling, the Court of Appeal concluded that use of Specsavers’ well-known shaded logo mark did indeed constitute genuine use of the shaded logo and therefore the mark should not be revoked.

Key to establishing validity of the wordless logo mark was assessing use of the shaded logo mark, counter-intuitive as this seems. The court made the following observations in relation to the shaded logo mark:

  1. substantial use of the mark over a long period of time and high marketing spend
  2. none of Specsavers’ competitors used marks remotely similar to the shaded logo or the wordless logo
  3. evidence showed that Asda knew they were ‘sailing close to the wind’ in their choice of logo
  4. Specsavers’ evidence showed that consumers identify the company with overlapping green ellipses, and that these would amount to genuine use of the wordless logo

The court concluded that Specsavers had established that the wordless logo was, by itself, an indication of origin:

‘[…] the average consumer has perceived and does perceive the Wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers. In short, much of that use has been such that the differences between the Shaded logo mark and the Wordless logo mark have not changed the distinctive character of the Wordless logo mark.’ (para [34])

What does this decision mean for brand owners?

General guidance to be gleaned from this case is limited. The Court of Appeal was careful to highlight the unusual circumstances of this case and avoided a suggestion that the Registrar of Trade Marks should now accept applications for commonplace outline shapes of logo marks. Indeed, it is difficult to think of many examples of a word imposed on a shape where the shape alone would be perceived as an indication of origin.

Jessica Stretch, solicitor in the Lexis®PSL IP & IT team. Originally published on WIPIT’s sister site, LexisPSL IP&IT.

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