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Further Clarity on Optical Trade Mark Case

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A recent case dealt with the vexed question of how similar one’s advertising can be to the trade marks of another company before this constitutes an infringement of its intellectual property rights.

When supermarket giant ASDA sought to break into the optical market in 2008, it launched an advertising campaign which sought to target customers of Specsavers and which featured a logo that was similar to the Specsavers logo in shape and colour.

The Specsavers trade mark had not been registered in a particular colour but was used by them in a particular shade of green. ASDA used a similar green logo. Furthermore, the ASDA campaign used the expressions ‘be a real specsaver’ and ‘spec saving’. Specsavers took exception to the campaign and sued ASDA for infringement of its trade marks with regard to both the logo used and the strap lines used in the advertisements.

The High Court rejected all but one of the claims and each side appealed the part of the decision that went against it to the Court of Appeal.

The Court of Appeal considered that the inclusion of the word ASDA in the strap lines concerned meant that an average consumer would not confuse the ASDA advertisement with one for Specsavers.

However, the Court concluded that the advertising campaign ‘permitted ASDA to benefit from the power of attraction, reputation and prestige attaching to Specsavers’ and was accordingly an infringement of Specsavers’ trade marks under article 9(1)(c) of the Community Trade Mark (CTM) Regulation, which prevents the use of ‘a similar sign for any goods or services where such use without due cause among other things is detrimental to the distinctive character or the repute of the CTM’. The question of the importance of colour in such circumstances was referred to the Court of Justice of the European Union.

Although there are still issues to be finalised in this case, it does show how dangerous it can be to embark on an advertising campaign that uses marks or slogans similar to those of a competitor.