Trade mark dispute: Specsavers v Asda

Specsavers has triumphed in a five-year trade mark dispute with Asda over its overlapping ellipses logo, which resembles a pair of spectacles.

The dispute arose when Asda prepared marketing based on a similar shape. Specsavers contested this on the basis of trade mark infringement and passing off. The High Court found in favour of Asda and revoked Specsavers wordless trade mark on the basis of non-use since they always have the word “Specsavers” superimposed on them. The case has since been settled out of court, but Specsavers appealed the decision to revoke the wordless logo.

The Court of Appeal has now held that registration of the wordless logo should be reinstated, after referring the issue of non-use to the Court of Justice in Europe (CJEU).

Antony Gold, partner at HGF Law, who acted for Specsavers, says one important issue was whether the public “actually saw or perceived the wordless logo underneath. In this respect, Specsavers was able to point to evidence that, when formulating its marketing campaign, Asda’s marketing team had produced a series of potential logos it could use, each of which, to varying degrees, was modelled on Specsavers’ overlapping ellipses.” This evidence helped to demonstrate that the overlapping ellipses had a separate identity from the usual use of the ellipses with “Specsavers” superimposed.

Ruling in Specsavers v Asda [2014] EWCA Civ 1294, Lord Justice Kitchin said: “It is reasonable to suppose that Asda had a good understanding of the nature of the market, the characteristics of the average consumer and other matters affecting how the average consumer would react to the use of the proposed logos and, for my part, I adhere to the view that this is therefore very persuasive evidence of how the shaded logo mark is perceived.”