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? It opened some opticians' stores in its supermarkets, marketing them with a campaign featuring logos consisting of non-overlapping white ovals with "Asda Opticians" written on them in a light green colour favoured by Specsavers but which was not specified in its non-colour-specific trade mark registrations. Its promotional material carried straplines which really invited trouble: "be a real spec saver at Asda" and "spec savings at Asda" [Readers who can't spot the bit that annoyed Specsavers should get their eyes tested, says Merpel]. There was evidence that Asda (i) initially planned to parody Specsavers' logos and advertising, thus inviting the public to compare its offering to that of Specsavers in a fairly blatant manner and (ii) took legal advice on whether Specsavers could legitimately object to various designs and straplines, before choosing those which led to this action.

Apart from alleging passing off Specsavers argued that, by using its logos and straplines, Asda committed regular similar-mark/same services infringement under Article 9(1)(b) of the Community Trade Mark Regulation and took unfair advantage of the earlier marks under Article 9(1)(c) of the same Regulation.

Mann J gave judgment in part in Specsaver's favour.

* The claim based on similar-mark/same service confusion failed: if a registered mark was unlimited as to colour it was registered for all colours and the colour of the allegedly offending sign became irrelevant. In this case, once colour was eliminated there was a degree of similarity between the respective logos, but there was also a significant visual difference in that Specsavers' ovals overlapped but Asda's didn't. While the ovals were an important part of the logos, they did not dominate them to the point that they subordinated the wording when considering the logo's overall appearance. What's more, the wording introduced a very significant difference, giving a very different overall impression and a reasonably circumspect consumer would not be confused by the presence of ovals if they were the only real element in common.

* The fact that Asda -- not for the first time in its trading life [Remember Penguins v Puffins, says the Kat, reported as United Biscuits v Asda [1997] RPC 51] -- was "living dangerously" did not make any difference to this conclusion and did not amount to evidence of an intention to confuse.

* The unfair advantage claim succeeded in respect of the first strapline but failed in respect of the logos and second strapline. This was because there was a link between the first strapline and the mark in that "spec saver" plainly called to mind the claimants' "SPECSAVERS" trade mark, and Asda clearly intentionally gained an advantage by drawing on the reputation already established by Specsavers' brand. As to the logo, the "living dangerously" evidence showed that Asda did indeed think its logo would have a resonance with Specsavers', but did not distance itself sufficiently from the earlier brand to remove that resonance. That amounted to "bringing to mind", but obly very weakly: any advantage from it was too slight to be unfair.

* Misrepresentation lay at the heart of passing off and there was none here: despite the similarities, there was simply too much of Asda's own branding on its own services to give rise to any misrepresentation.

* One of Specsavers' logos was revoked for non-use: it was a wordless one, it had not been used by itself in connection with the services for which it had been registered and its use with words written across it altered its distinctive character.

Says the IPKat, Specsavers probably feel quite sore about this, even though they have secured a small measure of what they sought to achieve. He also notes that, once again, survey evidence was put together by the claimant and then pulled apart by the court. When will claimants in cases involving proof of confusion and/or reputation finally work out how to address the methodological and inferential issues that seem to trip them up on almost every occasion? Merpel is unhappy in general about the conclusions relating to likelihood of confusion: if the relevant consumer of Specsavers' and Asda's optician services has poor eyesight, is he or she not more likely to be confused by the similarities in overall appearance between the two than the keen-sighted Mr Justice Mann?