Should ASDA have gone to Specsavers to see that its strapline would take unfair advantage? – Specsavers v Asda, High Court

Specsavers was a famous money-saving optician and had registered trade marks for its name and two overlapping ovals logo. Asda was re-launching its optician service. Specsavers objected to the logo and straplines used by Asda and claimed under registered trade mark infringement for the marks being confusingly similar or taking unfair advantage and also under passing off. The High Court dismissed most of Specsavers’ claims but upheld the one concerning unfair advantage.

The logos had some similarities but also some differences. One logo consisted of two ovals that overlapped and the other did not, and Asda’s ovals did not dominate over its famous name that was also present. Therefore, a reasonably circumspect consumer would not have been confused. Likewise, the notional consumer would not have been confused by Asda’s use of Specsavers’ straplines as the advert was clearly by Asda. For the same reason of lack of confusion, the claim in passing off was not made out.

Where Specsavers’ claim succeeded was in relation to the strapline ‘Be a real spec saver at Asda’. This was use of a sign identical with or similar to Specsavers’ registered trade mark where Specsavers had a reputation and the use of the sign was without due cause and took unfair advantage of, or was detrimental to, the distinctive character of the repute of Specsavers’ mark. There was a link as ‘spec saver’ clearly called to mind ‘SPECSAVERS’. Asda had also obtained an unfair advantage by using the strapline to draw on the reputation of the other. This was riding on the back of Specsavers’ coat-tails. Since this was intentional, it was unfair. A second strapline ‘Spec saving at Asda’ was not a problem as the link was much weaker than with the first strapline and any detriment was therefore much less likely.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin and editor of Upload-IT, comments: ‘This case builds on the recent L’Oréal v Bellure and Whirlpool v Kenwood cases. Asda argued that it could not be riding on the coat-tails of Specsavers as they were two very well-known companies. However, the Court said that that was not relevant. Therefore, the recent judicial extension to the application of the unfair advantage law does not depend upon the size or profile of the relevant organisations or whether they are established businesses or new entrants to the market.’