Last week the Chancery Division dealt a blow to Specsavers when judgment was given in its trade mark infringement claim against Asda. Keen-eyed observers will also see that Specsavers were represented by the aptly named Adrian Speck.
Asda ran an in-store advertising campaign for its optician’s services which featured a logo containing two ovals along with the straplines "Be a real spec saver at Asda" and "Spec savings at Asda". Specsavers, whose own logo consists of two interlocking ovals framing the word ‘Specsavers’, brought claims for trade mark infringement on the basis that the use of the logo and the straplines caused confusion, and took unfair advantage of their registered marks. They also claimed passing off. (The logos can be seen in the appendices to the judgment which can be found here.)
The court ruled against Specsavers on all but one of its claims. It was a clean sweep for Asda on likelihood of confusion (or the lack of it), which can be a difficult claim to run in comparative advertising cases: in order to draw an effective comparison, it must be possible for consumers to distinguish between the two traders in question, and so comparative campaigns are generally designed to avoid confusion. Specsavers did have some success on the ‘unfair advantage’ claims, as the court held that Asda’s use of the "Be a real spec saver at Asda" strapline took unfair advantage of the SPECSAVERS trade mark. The use of the words ‘spec saver’ was a clear link to the SPECSAVERS mark, and by using it Asda were taking unfair advantage of Specsavers’ established reputation. There was, however, no unfair advantage in Asda’s use of the ovals logo (which was held to have only a weak resonance with the Specsavers logo) or the "Spec savings at Asda" strapline.
There was an obvious intention on Asda’s part to incorporate a reference to Specsavers into their campaign and the court seemed to accept that it was ‘living dangerously’. Intention is generally irrelevant in trade mark infringement claims (except perhaps where it comes into the ‘honest practices’ test applying to some of the defences), but here the court conceded that if there is evidence showing a defendant is ‘living dangerously’, that would be admissible but not conclusive in relation to the question of actual confusion. In this case the ‘living dangerously’ evidence did not affect the result on confusion, but it did appear to make the court more amenable to a finding that there was a link between the logo used by Asda and the Specsavers logo. The court’s approach appears to suggest that advertisers who deliberately sail close to the line could find themselves in more trouble, but anyone who mounts a comparative advertising campaign will surely be ‘living dangerously’ in the same way that Asda was. Comparative campaigns will always involve a deliberate attempt to incorporate a reference to another trader. The trick is to live dangerously by sailing close to the line without crossing it, so it is important to obtain good compliance advice.