A recent Court of Appeal decision has ended a long running battle between Specsavers and Asda over the use of advertising and its trademarks.

 Specsavers has sought to enforce its intellectual property rights, to prevent a competitor from trading off the back of its success.

 The case arose from a marketing campaign used by Asda in 2009 to re-launch its own in store opticians. The campaign by Asda included the use of various marketing logos, slogans and strap lines on its advertising material. Such strap lines included the sayings “Be a real spec saver at Asda” and “Spec savings at Asda”.

 Specsavers alleged that Asda had infringed its trademarks, because the strap lines were identical or similar and any such advertising would be confusing and misleading to the public. Specsavers also complained that Asda had sought to draw on its established reputation, by taking advantage of Specsaver’s trademark rights.

 Specsavers also relied upon its reputation, brand goodwill and alleged passing off by Asda.

 In 2010 Specsavers was partially successful. The High Court did not agree that the use of the strap line “Spec savings at Asda” would lead to a likelihood of consumer confusion. However, it did find that Asda was liable for using a sign identical or similar to Specsavers’ trademark, off which Specsavers had established a reputation. Asda was found to have infringed trademark rules by using the strapline “Be a real spec saver at Asda” in its promotion. The rest of the case was rejected by the High Court and Specsavers appealed against this, with success.

 The Court of Appeal has recently handed down a decision, ruling that another strapline used by Asda namely “Spec savings at Asda”, and the use of the double ellipse logo in the advertising, were also infringements.

 Asda’s appeal on the first ruling was dismissed, but the Court of Appeal has added that elements of trademark law needs to be clarified by the European Court of Justice, before the remainder of Specsaver’s appeal could be determined. Specsavers is now seeking damages from Asda, in light of the findings.

 For more information regarding this blog, or any services that Paris Smith offer including trademark infringement, please contact Diane Pearce on 023 80 482299 or diane.pearce@parissmith.co.uk