Specsavers International Healthcare Ltd and Others (Appellants/Claimants) v Asda Stores Ltd (Respondent/Defendant)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin |
| Judgment Date | 26 April 2012 |
| Neutral Citation | [2012] EWCA Civ 494 |
| Docket Number | Case No: A3/2010/2581 |
| Court | Court of Appeal (Civil Division) |
| Date | 26 April 2012 |
[2012] EWCA Civ 494
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
The President of the Queen's Bench Division
Lady Justice Black
and
Lord Justice Kitchin
Case No: A3/2010/2581
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
Original hearing dates: 11/12/13 October 2011
This is the judgment of the court in relation to various outstanding matters following our main judgment [2012] EWCA Civ 24. They are:
i) the precise wording of the injunction;
ii) permission to appeal;
iii) costs.
We shall address them in turn.
The injunction
The order for the injunction is agreed between the parties in the following form save for the inclusion of the words "or otherwise howsoever":
"The Defendant is restrained (whether acting by its directors, officers, servants or agents or any of them) from infringing the following Community Trade Marks or any of them:
(i) CTM 1321298
(ii) CTM 3418928
(iii) CTM 449256
(iv) CTM 1321348
(v) CTM 5608385
whether by use of the straplines 'Be a real spec saver at Asda', 'Spec savings at Asda' or the logo comprising two adjacent ellipses or otherwise howsoever. Nothing in the foregoing shall prevent the Defendant from making any reference to SPECSAVERS in lawful comparative advertising in accordance with EC Directive 2006/114/EC concerning misleading and comparative advertising."
Specsavers submits the words "or otherwise howsoever" should be included because without them the injunction would be limited to the precise form of the offending use. Asda, it continues, should not be permitted to use a different strapline including the phrase "spec saver" or a variant of it. Nor should Asda be permitted to use the Asda logo or a variant of it in other offending ways. But it accepts that it is appropriate to include an express proviso permitting lawful comparative advertising.
Asda contends the words "or otherwise howsoever" should be omitted because Asda has long since stopped using the straplines and the Asda logo. Further, such an injunction would be too uncertain in scope and would be contrary to the direction made by this court on 14 February 2012.
Section 37(1) of the Senior Courts Act 1981 confers upon the court a general discretion to grant an injunction in all cases where it appears to the court to be just and convenient to do so. In exercising its discretion the court must have regard to all relevant circumstances.
As a starting point, the court will have in mind that the jurisdiction to grant an injunction is preventive and will only be exercised if the court is satisfied that a person threatens and intends to do a wrongful act. If the proprietor of a registered trade mark establishes that a defendant has infringed that mark then, as a general rule, an injunction will be granted against him because he has evinced an intention to engage in an infringing activity. On the other hand, if it appears from all the circumstances that the defendant presents no such threat and there is no risk of further infringement then an injunction will be refused.
The court will also be concerned to ensure that any injunction is appropriate and proportionate in the light of all the facts of the case and is drafted in such a way as to define as clearly as possible what it is that the defendant may not do.
When infringement of a registered trade mark has been established then an injunction in the general form sought by Specsavers will often be appropriate, as Millet J (as he then was) explained in Spectravest Inc v Aperknit Ltd [1988] FSR 161 at 174—175:
"In intellectual property cases a plaintiff is concerned not only to stop exact repetition of the defendant's current activity which can be described with particularity, but to prevent fresh invasions of his rights in ways which cannot be foreseen or described exactly. The ingenuity of those who infringe copyright and trade marks and engage in passing off is boundless, and plaintiffs cannot be adequately protected by orders which are cabined or confined. That is the reason for the standard forms of injunctions in such cases, with their inevitable references to "otherwise infringing," "substantial part," "to like effect," "colourable imitation," and "otherwise passing off". Where a defendant, faced with such an order, acts honestly and reasonably, this will mitigate and even excuse a breach of the order; but if a breach is proved, it will be for him to mitigate or justify it, and his excuse may need to be thoroughly probed if the circumstances are suspicious."
Similarly, in Coflexip S.A. v Stolt Comex Seaway MS Ltd [2001] RPC 9 this court allowed an appeal against the grant of a limited form of injunction in a patent action, explaining that the general form of injunction does, in general, provide a fair solution. Aldous LJ put it this way at [19]-[21]:
"19. The judge seemed to believe that injunctions which restrained infringement of a patent were broad injunctions: but they equate to the statutory right given; a right which has been held to have been validly granted and infringed. The injunction granted by the judge would allow the defendant to do other acts even though they may infringe. The defendant in those circumstances would be better off in that a change from that which is described and shown in the process description would allow him to continue in business without having to seek guidance from the court before adopting the change. The advantage to the defendant of only having the injunction cover a particular article or process is clear. If he makes a change he will not be in breach and it will be up to the patentee to bring another action. However, the disadvantage to the patentee is equally clear. To obtain an injunction he has to establish his monopoly and that it has been infringed, and the judge must conclude that further infringement is apprehended. From his point of view, it is the infringer who should seek guidance from the court if he wishes to sail close to the wind. In the normal course of events that would be reasonable.
20. The usual form of injunction which protects the right established by the patentee, with its ambit construed by the court, does in general provide a fair solution. However, each case must be determined on its own facts and the discretion exercised accordingly.
21. In the present case, nothing has been brought to my attention which would suggest that anything other than the usual form of injunction would be appropriate. The injunction suggested by the judge was in my view inappropriate."
The court will always have in mind that the scope of any injunction must be fair to the defendant and should not extend any further than necessary. If, for example, an injunction in general form would have the practical effect of stifling a legitimate business then it may be appropriate to craft a qualified injunction, as in Sun Microsystems Inc v Amtec Computer Corp [2006] FSR 35. All must depend upon the circumstances of the particular case.
In this case Specsavers has established infringement of its registered trade marks under Article 9(1)(c) of the Community Trade Marks Regulation ( Council Regulation (EC) 207/2009) by the use of both straplines and by the use of the Asda logo as part of the composite advertising and promotional campaign. The allegation of infringement under Article 9(1)(b) has been rejected entirely, as has the allegation of infringement by the use of the Asda logo when used independently of the straplines. All of these findings and the reasons for them are set forth fully in the main judgment and are reflected in the declarations we propose to make.
We are also conscious that Asda and Specsavers were and remain competitors and that the campaign in which the offending signs were used was specifically targeted by Asda at Specsavers. The conception and development of the campaign are detailed in the main judgment but, in summary, involved the use of the Asda logo which was intended to have resonances to Specsavers' logos, and the straplines which contained a deliberate reference to Specsavers. Overall, Asda's intention was to convey a reference to Specsavers' attributes in the areas of range, professionalism and price.
We recognise that Asda's campaign is, in a sense, historical in that it ran for a six week period in 2009. Moreover, the order of Mann J of 6 October 2010 contained an injunction from trial to the appeal restraining the use of the first strapline and any slogan or other phrase in advertising or promotion which included the words "spec saver" or which made any reference to the trade mark "Specsavers". However, Asda and Specsavers remain competitors and Asda has never offered an open undertaking in respect of its future marketing activities.
Accordingly we have no doubt that it is appropriate to grant the general form of injunction sought by Specsavers in respect of the straplines. Such an injunction is necessary to prevent Asda from adopting straplines which incorporate some slight variation of the phrases "spec saver" and "Spec savings" but are equally offensive.
As for the Asda logo, we recognise that an...
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