NIPC Law: Use of a Trade Mark: Specsavers v ASDA. In Community Trade Marks: Specsavers v ASDA 7 Feb 2012 NIPC Law I analysed the litigation that had taken place between two well known retailers in which the Court of Appeal considered how far an aggressive marketing campaign can go without infringing trade mark law.
As I said in my case note Specsavers International Healthcare Ltd and others ("Specsavers") had brought an action for trade mark infringement and passing off against the supermarket chain Asda Stores Ltd. ("ASDA") for using the marketing materials that I identified in my note and Asda counterclaimed for revocation of Community trade mark 1358589 depicted above ("the wordless mark") for non-use. Accordingly, the Court of Appeal referred the following questions to the CJEU: "1. The CJEU considered those questions in C-252/12 Specsavers Optical Superstores Ltd and Others v Asda Stores Ltd [2013] WLR(D) 287, ECLI: EU: C:2013:497, [2013] Bus LR 1277, EU: C: 2013:497, [2013] EUECJ C-252/12 and gave the following answers: "1. When words are irrelevant ... CJEU rules on Specsavers' logo reference.
This Kat had quite forgotten that the ruling of the Court of Justice of the European Union in Case C‑252/12, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, was coming out last week.
If his memory fails him occasionally, that of his readers may also be fallible. Accordingly he takes this opportunity to refresh theirs with a quick summary of the facts. CJEU rules on Specsavers -v- Asda. Specsavers triumphs in Asda trademark battle after switching from Eversheds to HGF Law. Specsavers has triumphed in a five-year trademark battle which went all the way to the European Court of Justice, having switched from Eversheds and Blackstone Chambers’ silk Michael Bloch QC to HGF Law and 8 New Square’s James Mellor.
In a Court of Appeal (CoA) hearing last week the high-street giant brought an end to its longstanding battle started with Asda after Lord Justice Kitchin and Lady Justice Black ruled that it should be able to retain a trademark for its oval shape alone, reversing a High Court decision in 2010. Specsavers originally turned to former Eversheds partner Antony Gold, and retained the partner when he moved to HGF Law in May 2013. The July CoA hearing hinged solely on whether or not Specsavers could restore its worldless trademark, enabling it to defend its logo in the future, after Asda and Specsavers settled their infringement dispute in 2012. Gold instructed 8 New Square James Mellor for the 29 July 2014. The IPKat: The spectre of Specsavers, or The Cost of Costs ... The saga of Specsavers v Asda has been told thrice already on this weblog, once when it turned out that the defendant's lawyers couldn't prepare their client's case because they were busy filling their client's shelves (see here and here), once when the trial judge got it mainly wrong and once when the Court of Appeal got it more or less right and referred some questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling, to be on the safe side..
The IPKat: Breaking news: Specsavers v Asda goes to European Court of Justice. The IPKat: Breaking news: Specsavers v Asda goes to European Court of Justice. The IPKat: A sight for sore eyes? Readers with long memories and lawyers-turned-shelf-fillers will remember the IPKat's posts last year on a thoroughly respectable law firm making a bit of a spectacle of itself in the dispute between Specsavers International Healthcare and Asda Stores (see here and here).
Late last week came news that Mr Justice Mann was giving judgment in the sequel, Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch), a decision of the Chancery Division for England and Wales. High-street budget optician chain Specsavers sued Wal-mart's UK avatar Asda Stores for infringing its SPECSAVERS word and figurative trade marks and for passing off. What had Asda done to deserve this attention?
That annoyed Specsavers should get their eyes tested, says Merpel]. Mann J gave judgment in part in Specsaver's favour. The IPKat: Great Scott! All but the IPKat's most recent readers will recall his post earlier this month about the sad saga of Wal-mart's UK presence Asda not being able to face an early date for a trade mark infringement trial because its legal team from Pinsent Masons was busy filling shelves as part of a getting-to-know-you exercise for its giant client.
The IPKat, having wondered what Asda would have to make its shoppers pay if it charged its shelf-stackers out at their usual hourly rates, then let Merpel have her way by running a caption competition. Merpel offered a copy of the just-published 9th edition of the Butterworths Intellectual Property Law Handbook for the best law firm-related caption to go with the Asda staff photo below, generously opening the competition even to employees of Asda and Pinsent Masons. Here are the best entries: * "Try our fresh Pannone! Rain-drenched in Manchester, they sparkle with entrepreneurial zeal! There were some other very funny entries which, alas, couldn't be listed. The IPKat: You thought your legal qualification would save you from a job stacking shelves ...? The IPKat is keeping an eye out for further developments in the litigation between the popular Guernsey-based UK high-street optician chain Specsavers and Wal-Mart's UK presence Asda, in a row over alleged trade mark infringement and copycat advertising.
According to Times Online, Specsavers says Asda's use of the slogan "Be a real spec saver at Asda” is calculated to mislead customers and damage its business. It also objects to the use of Asda's logo (left) which, it maintains, is confusingly similar to its own (right). Yesterday Mr Justice Kitchin (Chancery Division, England and Wales) ordered an April 2010 trial on the basis that there was sufficient evidence to believe that Asda’s campaign could threaten Specsavers’ reputation to bring the trial forward.
Specsavers’ had argued that it should be held as early as January. As a gesture of Christmas goodwill, Asda plans to stop using its “Be a better spec saver” slogan after this week -- but that's about as far as the goodwill goes. The IPKat: A clear vision of genuine use: Specsavers v Asda (again) Specsavers v Asda: registering logos and brand names separately. A recent ruling from Europe's highest trade mark court in the battle between Specsavers and Asda has affirmed the advantage of registering logos and brand names separately - whether or not they are in fact always used together.
Background In 2009, Asda launched an advertising campaign which included the following slogans and trade marks; "Be a real specsaver at Asda" "Spec saving at Asda" Click here to view image. Specsavers v Asda: registering logos and brand names separately.