Spectacle Selling Asda Lives Dangerously
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All spectacle wearers will sit up and take note of this recent decision from the UK Court of Appeal (see judgment here).
The Court of Appeal held that the use of the phrase “Be a real spec saver at Asda” would not lead to a likelihood of confusion but that it did take unfair advantage of the distinctive reputation and character of the well known Specsaver marks.
Specsavers owns registered Community trade marks for the words SPECSAVERS, as well as for a number of logos comprising overlapping ovals. Two of the logo marks incorporate the word mark ‘Specsavers’, the third does not and was described as the 'wordless' logo. Specsavers sued for infringement of its marks and Asda applied for the wordless logo to be revoked on the grounds of non-use. Specsavers argued that it had been used through its use as part of the other logos which included the word 'Specsavers’.
Trade Mark Confusion
The Court’s finding that there was no likelihood of confusion was driven by the view that there was an important distinction between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader's goodwill. In the former case, the Court held that the person “has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away”.
Unfair Advantage
The Court held that the Asda advertisement did call Specsavers to mind for consumers and that accordingly, the advert was taking unfair advantage of the reputation and distinctive character of the Specsavers’ trade marks in a way that was intended to draw a customer’s attention and benefit from that reputation without paying for the advantage.
Conclusions
The Court of Appeal has now referred questions to the European Court of Justice in relation to the “non-use” issue around the “wordless logo” as regards, among other things, whether “use” in conjunction with another mark can be taken into account. So it would seem that this case is still one to watch!
