A close run thing: Specsavers beat Asda

Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch) involved allegations that the supermarket had infringed Specsavers' word and figurative trade marks and that they had committed a passing off. Interesting, because in the Penguin v Puffin case (aka United Biscuits v Asda) years ago there were trade mark infringement and passing off claims, and they went different ways. That case was also invoked here as an indication of the defendants' general attitude to matters of trade mark law - interesting to see their past record of "living dangerously" come up in new proceedings.
Asda advertised its in-store opticians using signs that took certain elements from the claimant's get-up, including several that featured in registered trade marks. The main thing was the two ovals - a highly stylised representation of a pair of spactacles, perhaps, though crucially in the claimant's mark they overlapped and Asda's didn't. The colour green was also chosen, in a very similar shade, though the trade mark was not registerd in colour so this could not affect the infringement case. Asda also used the slogans "be a real spec saver at Asda" and "spec savings at Asda". Their original intention had been to parody Specsavers' advertising, blatently inviting the public to compare the two, and they took legal advice to judge just how dangerously they could live.
The trade mark claim was that Asda were using a similar mark for identical services, creating a likelihood of confusion, and that they took unfair advantage of the reputation of the earlier marks. Mann J held for Specsavers, but not entirely: the first of those claims failed because colour was an important element but was not protected by the registered trade mark, and take away the colour and there were enough differences (especially the non-overlapping ovals). The ovals alone were an important element of the mark but not dominant, and the introduction of the wording within the ovals made a very significant difference. Indeed, the overall impression was different - and although "different overall impression" is the test for infringement of a design, the Court of Justice imported it into trade mark law in SA Société LTJ Diffusion v SA Sadas [2003] FSR 1. The judge thought that a reasonably circumspect consumer (the Court of Justice invoked a "reasonably well informed, reasonably observant and circumspect" consumer (Lloyd Shuhfabrik Mayer v Klijen Handel BV [2007] FSR 77 at para 27), which might have allowed the claimant to introduce considerations about the eyesight of a prospective customer - had they been sufficiently mischievous) would not be confused by the ovals if they were the only element in common.
The unfair advantage claim succeeded only in respect of teh first slogan. the words "spec saver" in it clearly called the claimant to mind and intentionally gained an advantage by drawing on their reputation. This was not the case with the second slogan. As for the logo, the "living dangerously" evidence showed that Asda had aimed at "resonance", and the logo brought Specsavers to mind but not enough to amout to unfair advantage.
There was no misrepresentation, so the passing off claim fell at the first hurdle: there was too much Asda branding associated with the material for that claim to fly. And, to add to the claimant's presumed discomfiture, one of its non-verbal logo marks was revoked on grounds of non-use.
So, a victory, though with heavy losses, and interestingly the mirror image of the Puffin v Penguin case where United Biscuits lost on infringement but won on passing off.