The claimant complained of the defendant’s use of its trade marks alleging infringement and passing off when it relaunched its own optician services. Having had advance notice of the details of the proposed campaign, the claimants had launched their own pre-emptive campaign. They now admitted misuse of the confidential information acquired.
Held: The claim succeeded on one point but failed on the others. The Asda campaign had started with the claimant’s materials and worked away to what it considered to be a safe distance. The strap lines used were a parody of the claimant, but there first consideration was the emphasis on price advantage. That the defendant had approached the matter in this way supported in a limited way an assertion of intended confusion. The claim as to the logo failed. The ovals did not merge as was characteristic of the claimant’s logo. As to the strap lines used: ‘at one level there is a plain and close similarity between ‘Specsavers’ and ‘spec saver’. They are not identical, but they are closely similar. That is obvious from just looking at them, and the notion of parody, which Asda wanted, would not work if there were no similarity. But that does not entitle Specsavers to succeed. They need to establish that that similarity gives rise to a likelihood of confusion, or a likelihood of association.’ It was a contrast which was intended to be created, not confusion.
As to the claim under Article 9(1)(c): ‘it is necessary to show a link between the offending sign, in the sense of calling the registered mark to mind; that an advantage is gained thereby; and that that advantage is unfair. Here the campaign had set out to call the Specsavers to mind and had succeeded. As to the unfairness this related also to the element of ‘riding on the coat tails’ of Specsaver. This Asda had done. In this area, Asda’s intention was relevant: ‘calling the brand to mind in this way inevitably, and predictably, calls other aspects of it to mind. That is why it was done.’ It was using Specsavers’ established cachet for its own purposes. The claim in passing off failed.
Judges:
Mann J
Citations:
[2010] EWHC 2035 (Ch), [2011] FSR 1
Links:
Jurisdiction:
England and Wales
Citing:
Cited – United Biscuits v Asda ChD 1997
Robert Walker J upheld a claim in passing off notwithstanding the existence of different branding. He said: ‘But it seems to me to be likely that [certain individuals acting for the defendants] were, under advice, seeking to make only such changes . .
Cited – Lloyd Schuhfabrik Meyer v Klijsen Handel ECJ 22-Jun-1999
ECJ In accordance with the division of functions provided for by Article 177 of the Treaty (now Article 234 EC), the role of the Court of Justice is limited to providing the national court with the guidance on . .
Cited – LTJ Diffusion SA v Sadas Vertbaudet SA ECJ 20-Mar-2003
The Directive protected a trade mark owner against use in the course of trade of ‘any sign which is identical with’ the registered mark.
Held: A use was identical within the article if, when used, it both reproduced without any modification or . .
Cited – O2 Holdings Limited and O2 (UK) Limited -v -Hutchison 3G UK Limited ECJ 31-Jan-2008
ECJ (Opinion of Advocate General Mengozzi) Directive 84/450/EEC Comparative advertising Use of a competitor’s trade mark or of a sign similar to a competitor’s trade mark in comparative advertising Applicability . .
Cited – Whirlpool Corporation and Another v Kenwood Ltd CA 23-Jul-2009
Allegation of infringement of trade mark. . .
Cited – Intel Corporation v CPM United Kingdom Ltd (Approximation Of Laws) ECJ 27-Nov-2008
Europa Directive 89/104/EEC Trade marks Article 4(4)(a) Trade marks with a reputation – Protection against the use of a later identical or similar mark Use which takes or would take unfair advantage of, or is or . .
Cited by:
Cited – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 06 February 2022; Ref: scu.421362