Specsavers International Healthcare Ltd and Others (Appellants/ Claimants) v Asda Stores Ltd (Respondent /Defendant)

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLord Justice Kitchin
Judgment Date31 Jan 2012
Neutral Citation[2012] EWCA Civ 24
Docket NumberCase No: A3/2010/2581

[2012] EWCA Civ 24

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

CHANCERY DIVISION (INTELLECTUAL PROPERTY)

The Hon Mr Justice Mann

[2010] EWHC 2035 (Ch)

Royal Courts of Justice Strand, London, WC2A 2LL

Before:

THE PRESIDENT OF THE QUEEN'S BENCH DIVISION

Lady Justice Black

and

Lord Justice Kitchin

Case No: A3/2010/2581

Between:
(1) Specsavers International Healthcare Ltd
(2) Specsavers BV
(3) Specsavers Optical Group Ltd
(4) Specsavers Optical Superstores Ltd
Appellants/ Claimants
and
Asda Stores Ltd
Respondent /Defendant

James Mellor QC and Adrian Speck (instructed by Eversheds) for the Appellants/Claimants

Iain Purvis QC and Helyn Mensah (instructed by Pinsent Masons LLP) for the Respondent/Defendant

Hearing dates: 11/12/13 October 2011

Approved Judgment

Lord Justice Kitchin

Introduction

1

This is an appeal by the claimants (collectively Specsavers) against those parts of an order of Mann J dated 6 October 2010 whereby he declared that certain aspects of a marketing campaign conducted by the defendant (Asda) did not infringe Specsavers' registered trade marks and found one of those trade marks invalid for non use. Asda cross appeals against the one finding of infringement made by the judge.

2

Specsavers was founded in 1984 and by 2009, the date of commencement of these proceedings, had become the largest chain of opticians in the United Kingdom, operating through over 630 stores and with a market share of about 39%. It has always been the aim of the business to provide customer value in relation to price, quality, range and service. It uses in connection with its business a logo (the "Specsavers logo") which comprises two overlapping dark green ovals with the word Specsavers written across them. It looks like this:

3

Asda, the well known supermarket chain, has had opticians in some of its stores for a number of years. However, in mid 2008 it was concerned about its position in the market and so decided to re-position and re-launch its optical business. It set about developing a new marketing strategy which culminated in the launch of a marketing campaign in October 2009. There can be no doubt that Specsavers was its main target competitor. The campaign comprised a number of elements including newspaper advertisements, roadside billboards, on-line promotion and materials posted to customers and adopted in and around Asda stores.

4

As part of its campaign, Asda adopted two straplines which contained a deliberate reference to Specsavers:

"Be a real spec saver at Asda" ("the first strapline") and

"Spec savings at Asda" ("the second strapline")

5

Asda also adopted a new logo ("the Asda logo") which, in the form in which it was primarily used, comprises two abutting white ovals with the words 'ASDA' and 'Opticians' written across them in a green script. The ovals are placed on a green background. In its alternative form, used on certain recall cards, the colours are reversed and the words 'ASDA' and 'Opticians' appear in white across abutting green ovals. The particular green used by Asda is the same light green which it widely uses in connection with its business. The judge reproduced both forms of the Asda logo in Appendix 2 to his judgment and I have done the same.

6

Specsavers commenced proceedings for trade mark infringement and passing off as soon as it became aware of the Asda campaign. It deployed a battery of registered Community trade marks ("CTMs") which are set out by the judge in Appendix 1 to his judgment, which again I have adopted. It will be noted that CTM Nos. 1321298 and 3418928 consist of the word Specsavers (the "Word marks"); CTM Nos. 449256 and 1321348 comprise the Specsavers logo but without any colour limitation (the "Shaded logo" marks); CTM No. 5608385 comprises the two overlapping logos with the word Specsavers written across them but without a different shade in the area of overlap (the "Unshaded logo" mark); and CTM No. 1358589 comprises the logo in a single block colour but without the word Specsavers (the "Wordless logo" mark).

7

Specsavers alleged that the activities of Asda amounted to passing off; that the Asda logo in both its forms infringed its various logo marks under Article 9(1)(b) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark ("the Regulation"); that the first and second straplines infringed the Word marks under Article 9(1)(b) of the Regulation; and that the Asda logo and the first and second straplines infringed all of Specsavers' marks under Article 9(1)(c) of the Regulation.

8

The judge rejected all the allegations of infringement except one. He found that the first strap line infringed the Word marks under Article 9(1)(c) but not otherwise, and that neither of the other uses complained of infringed any of Specsavers' marks. He rejected the claim for passing off. He also revoked the Wordless logo mark for non use.

9

Specsavers now appeals the judge's rejection of the claim for infringement under Article 9(1)(b) and the rejection of the claim for infringement under Article 9(1)(c) in respect of the second strapline and the Asda logo. Specsavers also does not accept the rejection of the passing off claim but recognises that if the appeal in respect of trade mark infringement does not succeed then it cannot succeed on the passing off issue either. However, it does appeal against the revocation of and failure to find infringement of the Wordless logo mark.

10

Asda cross appeals against the finding of infringement under Article 9(1)(c) by the first strapline. It also contends that the judge should have found that the average consumer would not make any link between Asda logo and the Shaded logo marks.

Legal framework

11

The rights conferred by a Community trade mark are set forth in Article 9 of the Regulation:

"Article 9

Rights conferred by a Community trade mark

1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."

12

Article 15 imposes the requirement that a Community trade mark must be used. It reads, so far as relevant:

"Article 15

Use of Community trade marks

1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first sub paragraph:

(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered."

13

Article 51 makes non use a ground for revocation. It reads, so far as relevant:

"Article 51

Grounds for revocation

1. The rights of the proprietor of the Community trade mark shall be declared to the revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

(a) If, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

…."

14

These provisions correspond to Articles 5(1), 5(2), 10(1) and 12(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 ("the Directive").

The background

15

Asda's intention in developing and launching the marketing campaign the subject of these proceedings has a bearing on a number of the issues which arise for determination and so this was a matter the judge addressed in some detail. However, as the judge recorded at [16], [17] and [23], his assessment was hampered for two reasons. First, Asda did not call all of the individuals who were involved in the events of the time and in, particular, did not call all those who took over the preparation of the marketing campaign in its final stages after 17 September 2009. Second, the evidence of a number of the witnesses Asda did call was not entirely satisfactory. Mr Rick Bendel, the Chief Marketing Officer for Asda, was ultimately responsible for the campaign and gave evidence of how proposals for it came to be presented to him. The judge described him as somewhat defensive and, on occasions, evasive. Mr Langrish-Dixon was the Buying Manager for Asda Opticians and led the development of the campaign until shortly before its finalisation and launch. The judge described him as a very wary witness who often did not answer the question. Inevitably, therefore, the judge attached considerable importance to Asda's internal documents, and, as...

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