Specsavers International Healthcare Ltd v Asda Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mann |
| Judgment Date | 30 July 2010 |
| Neutral Citation | [2010] EWHC 1497 (Pat),[2010] EWHC 2035 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC09C04060 |
| Date | 30 July 2010 |
[2010] EWHC 2035 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Before: Mr Justice Mann
Case No: HC09C04060
Michael Bloch QC and Adrian Speck (instructed by Eversheds) for the Claimants
Iain Purvis QC and Kathryn Pickard (instructed by Pinsent Masons) for the Defendant
Hearing dates: 22 nd– 27 th April, 29 th April 2010
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Mann:
Introduction
This is an action in which the claimants (“Specsavers”), a well known chain of high street opticians, claim that the defendant (“Asda”), the well known supermarket (and which also runs optician's stores in some of its larger supermarkets), has infringed its trade marks and has been guilty of passing off. Asda denies that, and also attacks one of Specsavers’ marks for non-use. Although there are 4 Specsavers companies who are claimants in this case, it is unnecessary to distinguish between them for the purposes of this action and I shall treat them as one.
The marks and the infringing or offending acts
Specsavers’ marks are essentially 3, with 5 community registrations. They are set out in Appendix 1 to this judgment, with their registration numbers. The first is a word mark, and I shall use that expression to describe it. The second has shading in the overlap between the two logos shown, and I shall refer to it as the shaded logo mark. The third I will call the unshaded logo mark (for obvious reasons). And the fourth I will call the wordless logo, again for obvious reasons. None of the marks is registered for any particular colour, but in practice Specsavers deploys the logos in a particular shade of mid- to dark green, though whether it has deployed the wordless logo at all is a question that I will have to decide. Where the marks are deployed they are used extensively in public displays and on publicity material.
Asda has for some time had its own opticians in some (but not all) of its large stores, and decided to relaunch those services in circumstances to which I will come. In connection with that it launched a marketing campaign in October 2009 with logos and straplines some of which are alleged to amount to passing off or trade mark infringement. The offending material is set out in Appendix 2 to this judgment. They are set out in colour because a point is taken about that in this case. It should be noted that it is green, and in fact in a shade of green that is Asda's usual corporate colour. In describing them I shall use the descriptive terminology used in that Appendix. The logo was used principally in Asda stores and on the Asda website. In the stores it appeared on posters and on boards above the optical section. With one exception it was used in the form of green text on white ovals. The colour was reversed only in the case of “recall cards”, which are cards sent out to existing Asda optician customers inviting them to attend for a new eye test some time after their previous one. The straplines were used on various posters and other materials, the details of which do not matter for present purposes save that it is necessary to observe that the main strapline appeared in some in-store material in close proximity to the logo. The logo did not appear on any actual posters bearing the straplines, but the word “Asda” did. The straplines were used only for a few weeks at the end of 2009. Their use was mainly stopped as a result of a court hearing on 3 rd November. It will go to remedies if I find passing off or infringement. There were odd occasions on which some of the material was used after it had been agreed that use would stop for the time being, and even after an interim application. These were said by Asda to be accidents. For the purposes of this judgment I do not need to deal separately with these alleged breaches of contract and court order. They will be relevant to remedy (if any).
Pre-launch misuse of confidential information
Before the launch, the campaign design document fell into the hands of Specsavers. It was obviously confidential information. Nonetheless it was circulated amongst some of Specsavers senior management who used it to plan their reaction to the campaign. Part of that reaction was a pre-emptive strike. Having notice of some of the details of the campaign with which this judgment is not concerned, they launched their own identical offer so as to coincide with the launch, and thus got a few days, and some commercial advantage. The misuse of confidential information forms the subject of a counterclaim and has been admitted. In this action the evidence of senior personnel is that they think Asda has behaved badly and that Specsavers has the moral high ground. This conduct disqualifies Specsavers from moralising too heavily. However, that is not relevant to what I have to decide, and any consequences will be dealt with in a subsequent inquiry as to damages.
The law in outline and the issues
Although I shall have to return to some specific features of the law in due course, it will be useful to set out Specsavers’ basic legal target here.
So far as passing off is concerned there was little dispute as to the relevant law and I do not need to engage in an elaborate exposition of the law. It was not disputed that Specsavers had goodwill in its name and business. What is required for the purposes of a case in passing off is a misrepresentation or deception of customers as to whose product is being sold and consequential damage. The principal dispute in relation to this is whether there was, in the circumstances, any material misrepresentation in what Asda did. On the facts of this case this involves not merely a comparison of the marks, and evidence of alleged customer confusion. It also involves a consideration of why Asda did what it did, and whether it was deliberately “living dangerously” in trying to get as close to the Specsavers marks as it could without crossing the line – see United Biscuits v Asda [1997] RPC 513.
So far as the trade marks are concerned, Specsavers claims infringement under two provisions of the Trade Marks Regulation:
“9(1) … The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
… (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 include the likelihood of association between the site and the trademark;
(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 Company trade mark.”
Paragraph (c) is to be interpreted as covering use with similar as well as non-similar goods – see Kerly on Trade Marks 14 Edn at para 14–083.
Specsavers ran claims under both those heads. It said that there was a likelihood of confusion, and indeed it produced witnesses who it said were confused. So far as the second provision is concerned, it claimed that Specsavers had a relevant reputation (which was not disputed); that Asda's use forged a “link” in the mind of customers; that unfair advantage was taken by “riding on the coat-tails” of Specsavers’ distinctive reputation so as to benefit from the association of the marks without having to invest in building its own reputation; and that detriment was caused because the reputation and distinctive character of Specsavers’ mark would be diminished because Asda had lower standards in relation to professionalism of service and range of goods, and because the marks as a whole become less distinctive in a market in which its marks are aped.
The validity and use of the logos with words is not questioned. The wordless logo is. For the reasons appearing in Appendix 3 I consider that the registration of this mark falls to be revoked for non-use. I put the material in an Appendix to keep it out of the way of the rest of the issues in this case.
Witnesses
I heard evidence from a number of witnesses. Because of the allegations that the closeness of the two marks was deliberate, I heard a lot of evidence of the genesis of the Asda signs. The witnesses, and my brief findings on credibility, were and are as follows.
Dame Mary Perkins
She is one of the founders of Specsavers (the business was started in 1984) and remains on the board. She gave evidence of its development and reputation, and her distaste for what Asda had done, which she regarded as “pinching” Specsavers’ brand. She also expressed a generalised view about damage to Specsavers, without giving any details. She was a good and reliable witness but not much of her evidence was of any real relevance.
Richard Holmes
He is the marketing director of Specsavers with an extensive experience of marketing going back many years prior to his joining Specsavers in 2006. His evidence included Specsavers’ marketing spend and the messages that Specsavers sought to communicate by it – value, style and professionalism/quality. Then he turned to what Specsavers did to counter Asda's campaign in marketing and commercial terms, by (inter alia) reducing some of its own prices. Mr Purvis QC (counsel for Asda) criticised him...
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