The recent High Court case of Specsavers International Healthcare Ltd v Asda Stores Ltd has given a strong warning about parasitical advertising and riding unfairly “on the coat tails” of others. The principle of “Unfair Advantage” and the extended protection conferred to Trademarks with a reputation is very topical following the Court of Justice of the European Union’s ruling in L’Oreal v Bellure.
Asda opened in-store opticians and used branding, considered by Specsavers to be dangerously close to their logos, slogans and Trademarks. These included a green coloured logo comprised of two touching ovals with the words “ASDA Opticians” overlying the shapes and the slogans “be a real spec saver at Asda” and “spec savings at Asda”.
Evidence was found that Asda took the conscious decision to use Specsavers logo as a trigger point for their branding.
Specsavers’ claim of infringement against Asda’s use of the slogan “be a real spec saver at Asda” was successful. Although it was held that use of this slogan did not cause a likelihood of consumer confusion, it clearly called to mind Specsavers’ Trademark resulting in an “unfair advantage” being taken. Specsaver’s claims against Asda’s second slogan and use of its logo failed because these did not have a sufficiently direct impact upon consumer behaviour.
Use your Trademark as Registered – or Risk Revocation
During the proceedings, one of Specsavers’ registered Trademarks was revoked by Asda on the grounds of non-use. This a reminder for brand owners to pay careful attention to the format in which their registered Trademarks are used and the importance of regular portfolio reviews to ensure the maintenance of comprehensive and robust protection. In broad terms, a UK Trademark Registration can be revoked for non-use if it is not used in the format that it is registered in the five year period following registration (grant) in relation to the goods/services for which it is registered.
This case warns against sailing too close to the reputation of a competitor’s Trademark or branding. Whilst the mere bringing to mind of another Trademark is permitted, taking “unfair advantage” of the competitor’s reputation therein is a step too far.
If you would like more information, to discuss your Trademark portfolio or register a new Trademark, please contact one of our Trade Mark Attorneys.