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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd [2012] EWCA Civ 24 (31 January 2012) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2012/24.html Cite as: [2012] FSR 19, [2012] ETMR 17, [2012] EWCA Civ 24 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (INTELLECTUAL PROPERTY)
Strand, London, WC2A 2LL |
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B e f o r e :
LADY JUSTICE BLACK
and
LORD JUSTICE KITCHIN
____________________
(1) Specsavers International Healthcare Ltd (2) Specsavers BV (3) Specsavers Optical Group Ltd (4) Specsavers Optical Superstores Ltd |
Appellants/Claimants |
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- and - |
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Asda Stores Ltd |
Respondent/Defendant |
____________________
Iain Purvis QC and Helyn Mensah (instructed by Pinsent Masons LLP) for the Respondent/Defendant
Hearing dates: 11/12/13 October 2011
____________________
Crown Copyright ©
"Be a real spec saver at Asda" ("the first strapline") and
"Spec savings at Asda" ("the second strapline")
Legal framework
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
"Article 15
Use of Community trade marks
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first sub paragraph:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered."
"Article 51
Grounds for revocation
1. The rights of the proprietor of the Community trade mark shall be declared to the revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) If, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
The background
"We should market the truth - if we are cheaper than Specsavers and our range is as good then that's what we should market."
From this point, the judge held, the plans for the campaign had an eye on Specsavers.
"... review of messaging and marketing campaign to launch full on assault of [sic] Specsavers using price and range as the benchmark .
Nick have [sic] briefed Brilliantmedia to review how we create full on offensive attack on Specsavers ..."
Review messaging for Optical launch 19th October to be overtly aggressive against Specsavers."
The second, a Powerpoint slide prepared a few days later, records:
"A really clear message here - review of messaging and marketing campaign to launch full on assault of Specsavers using price and range as the benchmark."
and
"Specsavers is our version of 'my supermarket', so we should compare range and price to them."
Asda identified Specsavers' slogan: "Should've gone to Specsavers", and proposed: "Should've gone to Asda".
"Can you work up what an Asda Opticians logo would look like in Specsavers style please? ... This is a mock up at this stage, just the logo."
It seems that in response Mr Langrish-Dixon himself produced a mock-up which looked like this:
"Rick and Darren are really buzzed up about the new optical offering from October and they've told us to 'attack Specsavers on their own territory'. Exciting stuff! We've been told to parody Specsavers advertising, logo and messages."
On the same day, Ms Barnett asked Checkland Kindleysides for some new mock-ups, but using a modified logo with no overlap of the ovals.
Further, the campaign should be aggressive and he wanted Asda to use the words "spec" and "savers".
"To be able to shout that we are cheaper than Specsavers
To promote our transparent and complete pricing
To communicate that our quality is the same as Specsavers
Our breadth of range is the same as Specsavers"
"We do not have to stick to the Standard Asda colours. Asda green is similar to Specsavers and could help with the association - but we could use in a more stylised, less flat style.
Use more white with the green to give a designer feel to the store ."
"Asda green is very close to Specsavers green. Using a darker logo is also very Specsavers and complements our light green."
"We do not want to be seen to be copying Specsavers (e.g. copying logo, colours too closely) as this could make us seem desperate/the poorer cousin and makes us an easy target for them! Only want to compare ourselves, and make fun at them, as we are better, offering better value to our customers with just as good range ...".
The judge observed that it was apparent that, for her part at least, Miss Pritchard was not seeking to ape Specsavers' presentation. I would add that she was, however, seeking to make a comparison.
"We don't want to make the message too soft and loose [sic] the impact."
"Excellent piece of work Nicki - well done in achieving a strong end point on the POS solution - I think it looks very good and we've pushed the limits on getting as close to Specsavers as possible."
"I conclude that the plan of the design teams was to have a logo that at least had resonances to Specsavers' logo. They did indeed start from Specsavers and go to what their lawyers told them was a safe distance. It is in the bracket of 'living dangerously' cases. This material provides support for a confusion case. At the same time a big step in removing one perceived element of association was taken when it was decided that the logo would be green and white and not the other way round."
"Although Mr Bendel was initially reluctant to accept that they contained a reference to Specsavers, he did concede that they did. That was intentional. His instructions were to parody Specsavers in the straplines and to go after them on price. As observed above, you cannot parody something unless your material contains a reference to what you are parodying. The reference to Specsavers was deliberate."
"When they set about choosing slogans I consider that the Asda team were focussing on the price message. When they found the straplines, and particularly the first one, they were fulfilling their brief to reference Specsavers in a parodying way, and primarily had price in mind. When it was devised the first strapline also had the benefit, in the eyes of Mr Langrish-Dixon at least, of bringing in concepts of value as well, with the additional connotations that that brings in."
Article 9(1)(b)
General principles
(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.
The approach of the judge
"If I wanted to buy a pair of glasses made by Specsavers, do you know where is the nearest place that I could get them?"
The judge's conclusions
"136. There is a degree of similarity in that both logos have ovals with text inside, though that degree is significantly lessened by the fact that the Specsavers ovals overlap in a very characteristic fashion and Asda's touch. That introduces a significant area of visual difference. However, while the ovals are an important part of the Specsavers sign they do not dominate so as to subordinate the wording as a matter of overall appearance. The wording is equally significant. That being the case, a different form of wording (in the form of the Asda wording) introduces a very significant difference. In my view a very different overall impression is given. Taking that comparison by itself, I do not see how the reasonably circumspect consumer would be confused by the only real element in common, namely the presence of ovals, and thereby think that the two marks connote the same trade origin. Asda is itself a well-known name, and I do not readily understand how its name expressly spelled out, in prominent letters, could leave a reasonably circumspect consumer thinking that the mark is, or even might be, Specsavers'."
"140. . Here there is no context of being in an Asda environment already, and the colours are reversed so that they are white writing on a green background, like Specsavers'
(though the green is different). However, even in this case, and even allowing for Mr Jones's evidence, I do not think there is a likelihood of confusion. Again, the real key lies in the wording. It says Asda, not Specsavers. The reasonably circumspect consumer would not think it was a Specsavers card. I accept that Mr Jones did, but without intending him any disrespect I do not think that he was being reasonably circumspect or observant. The lettering is clear enough. He simply did not look at it properly, or properly enough. He may have been over-influenced by the colour green, but that is not being confused by the mark. "
"141. I do not consider that the "living dangerously" evidence changes this view of the matter. I have set out its significance above. It does not amount to evidence of an intention to confuse. Even if it is evidence of an intention to be close but not so close as to infringe, which is obviously a dangerous tactic, it is still evidence of an intention not to confuse because confusion would be dangerous. The process of starting with Specsavers and then moving away ended up with a final design. The real question is, and remains, whether that design confuses, not whether Asda hoped that it did not confuse, or hoped that they would get away with not confusing, or thought they had got far enough away. The question is whether they are far enough away. The intentions of Asda as I have found them to be, do not, on the facts, provide evidence of a propensity of the mark to confuse. Asda did not design it in order to achieve confusion. It had no wish for consumers to confuse one business for the other, so its intention and conduct cannot be relied on as evidence of a propensity to confuse. "
"142. The same conclusion and reasoning applies to the case based on likelihood of association. I do not see how the use of the logo with Asda written in it, even if in green, would give the circumspect consumer the idea that there was some sort of link. Two touching ovals do not have that capacity, and nothing else in the sign does either, particularly bearing in mind the wording which proclaims it is Asda's. This applies to both versions of the logo. Again, the evidence of the genesis of the mark does not assist Specsavers either. If one is looking for evidence of an intention to create an association in the relevant sense, it is simply not there. I find that that was something that Asda would not want to do at all. There was probably an intention to have some resonance, but that is not the same as association in this context. There was no intention to suggest an economic link. "
"145. At this point the context is all important. Taking the first strapline first, the context is a play on words with Asda's name prominently at the end of the strapline, and lower down on the poster. The relevant consumer would, in my view, read the sign in that way. The "spec saver" is a person who wishes to save money on specs. The strapline conveys that that is better done at Asda. It does not suggest that the advertisement is an advertisement for Specsavers, and I do not consider that the consumer would think that it was. The reference to Asda, in the context, makes sure that it cannot. The word "Specsavers" is a fabricated word make up from two existing words. The strapline breaks it up again. There is a looking back at the composite word (otherwise the play on words does not work), but it does not generate confusion. Mr Bloch's bald submission was that it could not be more obvious that confusion was likely. I am afraid I think it obvious that it is not."
"149. ... I consider that that is not the view that the notional required consumer would take. It seems to me to be a somewhat forced, perhaps over-intellectualised, view to take. I accept that it is the view that Mrs Pritchard took, and I also accept that Specsavers does not have to establish that all consumers would take that view. But it does have to establish that the notional consumer referred to in paragraph 27 of Lloyd would take it, and I do not consider that he or she would. As a matter of grammar the sign refers to a person, not a trading concern. That, of course, is nothing like determinative, but it is a start. I think that he or she would go on to realise that the slogan was a play on words, not an advertisement of a new commercial relationship. It connoted a comparison, not an equation. While the typical consumer does not sit in front of the poster deconstructing the slogan and analysing its elements to arrive at a conclusion as to what is being said, I think it is a fair observation that the consumer would have expected a clearer rendition of the Specsaver mark if the commercial connection made by Mrs Pritchard was to be made. That would have been achieved by using the word "Specsaver", with a capital letter - the capital letter would be the best way of forging the necessary association. It is absence of the capital and the split into two words which makes it plain enough that what is happening is a play on words, not an advertisement of a new connection. The use of the colour green does not assist Specsavers. It is not Specsavers green, and in any event does not build a connection that is otherwise not there, or reinforce the possibility of one to a sufficient degree promote the likelihood of an association."
The appeal
"25. Secondly, it seeks to know, for the purposes of assessing the existence of a likelihood of confusion within the meaning of Art.5(1)(b) of Directive 89/104, whether consideration should be limited exclusively to a comparison
between the trade mark and the disputed sign and between the goods or services for which the mark is registered and those for which the sign is used, or whether, on the other hand, it is appropriate to take account of the factual context in which the sign is used. "
"60. It is clear that, in the case in the main proceedings, H3G used the sign similar to the bubbles trade marks in the course of a commercial activity with a view to gain and not as a private matter. The mark was therefore being used in the course of trade (see, by analogy, Celine at [17]).
61. It is also clear that H3G used that sign without the consent of O2 and O2 (UK), the proprietors of the bubbles trade marks.
62. Furthermore, that sign was used for services identical with those for which those marks are registered.
63. By contrast, in accordance with the referring court's own findings, the use by H3G, in the advertisement in question, of bubble images similar to the bubbles trade marks did not give rise to a likelihood of confusion on the part of consumers. The advertisement, as a whole, was not misleading and, in particular, did not suggest that there was any form of commercial link between O2 and O2 (UK) on the one hand, and H3G, on the other.
64. In that regard, contrary to the submission of O2 and O2 (UK), the referring court was right to limit its analysis to the context in which the sign similar to the bubbles trade marks was used by H3G, for the purpose of assessing the existence of a likelihood of confusion.
65. It is true that the notion of likelihood of confusion is the same in Arts 4(1)(b) and 5(1)(b) of Directive 89/104 (see, to that effect, Marca Mode CV v Adidas AG (C-425/98) [2000] ECR I-4861 at [25]-[28]).
66. Article 4(1)(b) of Directive 89/104, however, concerns the application for registration of a mark. Once a mark has been registered its proprietor has the right to use it as he sees fit so that, for the purposes of assessing whether the application for registration falls within the ground for refusal laid down in that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent's earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered.
67. By contrast, in the case provided for in Art.5(1)(b) of Directive 89/104 , the third party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion.
68. Thus, the fourth condition required before the proprietor of a registered mark is authorised to prevent the use of a sign similar to his trade mark for goods and services identical with, or similar to, those for which that mark is registered is not satisfied in the case in the main proceedings.
69. Consequently, the answer to the first question must be that Art.5(1)(b) of Directive 89/104 is to be interpreted as meaning that the proprietor of a registered trade mark is not entitled to prevent the use, by a third party, in a comparative advertisement, of a sign similar to that mark in relation to goods or services identical with, or similar to, those for which that mark is registered where such use does not give rise to a likelihood of confusion on the part of the public, and that is so irrespective of whether or not the comparative advertisement satisfies all the conditions laid down in Art.3a of Directive 84/450 under which comparative advertising is permitted."
"77. The question which arises is this: how far do the "context" referred to by the Court at [64] and the "circumstances characterising that use" referred to by the Court at [67] extend? Counsel for Och-Ziff submitted that the context and circumstances were limited to the actual context and circumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used in a comparative advertisement, the context was the whole of the comparative advertisement, but no more. By contrast, counsel for the defendants submitted that the context and circumstances included all circumstances relevant to the effect of the use of the sign, including circumstances prior to, simultaneous with and subsequent to the use of the sign.
78. In my judgment the context and circumstances are limited to the actual context and circumstances of the use of the sign itself. The Court of Justice explicitly said at [64] that the referring court was right to "limit its analysis" to the context in which the sign was used. Furthermore, it referred at [67] to the circumstances "characterising the use", not to the circumstances more generally. Thus circumstances prior to, simultaneous with and subsequent to the use of the sign may be relevant to a claim for passing off (or, under other legal systems, unfair competition), but they are not generally relevant to a claim for trademark infringement under art.9(1)(b) . In saying this, I do not intend to express any view on the question of post-sale confusion referred to below."
"109. I turn to LOreal's cross appeal on the link point. Mr Carr submits that the "global appreciation" test involves considering not only the registered mark and the defendant's sign, but all other surrounding circumstances. So, he submitted, the fact that the defendants' products form part of a range of smell-alikes should be taken into account as should the manner in which the trade mark owner's mark is used.
110. I start with the latter point. He raised it in relation to the Pink Wonder box, held not to give rise to a link in either the historical or current version (the difference between the two is slight). Miracle is advertised on television with images of clouds. The Pink Wonder box, besides being generally pink (though a markedly different shade), shows some cloud images.
Mr Carr says they should be taken into account by reason of the global appreciation test. I cannot agree. The test is, and must be, founded on the mark as registered, not material which forms no part of that. There is simply no warrant in the Directive for taking more than the registered mark into account. The global appreciation test does not amount to the proposition that once a registered mark is used in marketing, anything, extraneous to the mark used in marketing, comes in too - as though it formed part of the registered mark.
111. As to the "the other surrounding circumstances" point - essentially that Creation Lamis forms part of a range - I think there is more force. But here we are looking at the defendant's sign. How it would be perceived in practice does form part of a global appreciation on the strict mark for sign test. But having said that, I do not think the judge fell into any error here. He was well aware the defendants' products form part of a range when he made his assessment of a "link". In the end what the trade mark owner has to prove is that that the link is caused by the similarity of his mark and the defendant's sign."
"112. With that I turn to the judge's alleged errors relating to "a link". I deal with the two word marks first. The judge found no link in respect of the Tresor word mark and the Coffret D 'Or name. I am not surprised. It is true that in French the two have some similarity at a high level of generality, but that is likely to be lost on the average British consumer buying the defendant's product in a street market. Even for a French speaker the allusion is at best remote. There was ample material to support the judge's view.
113. Implicitly here is a repeat of the argument I have just rejected, namely that in the global appreciation test you take into account not only the mark as registered but how it is marketed. So, even though the mark is just the word Tresor, you take into account the packaging of the product and the packaging of the defendant's Coffret D'Or product. That simply is not the law. The mark is what is registered, no more."
". if someone wishes to know whether a proposed sign infringes, he ought to be entitled to answer that question by looking at the register and working from that. Such a person should not have to conduct an additional enquiry into the colours used by the proprietor."
"70. Third, the informed reader would know the context provided by the Act and Rules. So he would know that the register is to contain any particulars of a limitation of rights.
On seeing the word "limited" he would be alert for a limitation of rights. If he had any doubt as to whether there was one he would have cause to go to the pre-registration correspondence - was there, he would ask, a s13(1) agreement? If he went, he would find that the mark was applied for (without evidence of distinctiveness through use) as a series of two marks, the logo in colour, and in black and white (meaning all colours). The Office objected to the black and white version saying it was "insufficiently distinctive" but in a telephone conversation confirmed by letter (15 April 1999) offered acceptance on the basis of a colour limitation. In a letter of confirmation agents said the decision was accepted with reluctance and asked for the colour version to proceed. In the circumstances it is clear that Caudwell were accepting a limitation within the meaning of s13. This is perhaps emphasised by the fact that in relation to another mark referred to in the same Office letter, the Office clearly drew a contrast between "a colour claim (as opposed to a colour limitation)"."
"54. In order to ascertain whether the combination of the shape of the tablet at issue and its pattern may be perceived by members of the public as an indication of origin, the overall impression produced by that combination must be analysed (see, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23). That is not incompatible with an examination of each of the product's individual features in turn.
55. Since the applicant has not claimed colour in the present case, the mark applied for cannot enable the products to be identified by reference to their origin unless the average consumer, when he sees a rectangular tablet with chamfered edges, speckles and a triangular inlay, will recognise it irrespective of its colour and associate all products presented in that way with the same origin."
"Specsavers also ran a case based on the cumulative effect of the signs. This case takes the use of one sign as part of the context of the other. This point did not occupy a central part in Mr Bloch's submissions, but it was referred to in opening and it reappeared in his written final reply submissions, albeit in the context of submissions under Article 9(1)(c) only. I should deal with it for the sake of completeness. Probably the high point of this case would be the appearance in the store of the logo and the first strapline side by side (more or less) - I was shown a photograph of one store where they were juxtaposed. The same occurs on Asda's website. Even in the context of this proximity I do not think there is a likelihood of confusion or association.
All that I have said about why the use of the logo in-store does not give rise to confusion applies here. The overwhelming impression is Asda, not Specsavers, and I do not think that the combination of the two elements does anything to counter this."
"Any party wishing to conduct a survey directed to the issue of consumer perception of the acts of the defendant complained of by the claimant must first apply to the court with the proposed survey to seek directions of the Court."
"I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard."
Article 9(1)(c)
General approach
"29 The infringements referred to in Art.5(2) of [Directive 89/104], where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them (see, to that effect, Case C-375/97 General Motors [1999] ECR I-5421, para.23).
30. The existence of such a link must, just like a likelihood of confusion in the context of Art.5(1)(b) of Directive [89/104], be appreciated globally, taking into account all factors relevant to the circumstances of the case (see, in respect of the likelihood of confusion, [Case C-251/95] SABEL [[1997] ECR I-6191], para.22, and [Case C-425/98] Marca Mode [[2000] ECR I-4861], para.40)."
"39. As regards detriment to the distinctive character of the mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, para.29).
40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
41. As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Art.5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, para.28)."
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect,
Intel Corporation, paras.67 to 69)."
"47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oreal and Others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
50. In the light of the above, the answer to the fifth question is that Art.5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
"112. Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oreal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party.
....
136. ... It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oreal v Bellure. No additional factor has been identified in this case other than intention....
137. The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oreal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel Here, although the relevant goods are very similar (even identical if one is considering the category stand mixers), the mark is distinctive, but not strongly so, nor is the reminder strong. That is therefore another pointer away from unfair advantage. At para.66 of her Opinion in Intel Advocate General Sharpston referred to the question whether the association of the earlier mark would enhance the performance of the later sign in the use made of it. That is another way of putting the proposition that the alleged infringer must draw some advantage from the use of a similar mark or sign. In L'Oreal v Bellure the third party's advantage had been established; here it is very much in issue.
"67 In the case of the referencing service, it is common ground that the advertiser, having chosen as a keyword a sign identical with another person's trade mark, intends that internet users who enter that word as a search term should click not only on the links displayed which come from the proprietor of the trade mark, but also on the advertising link of that advertiser.
68. It is also clear that in most cases an internet user entering the name of a trade mark as a search term is looking for information or offers on the goods or services covered by that trade mark. Accordingly, when advertising links to sites offering goods or services of competitors of the proprietor of that mark are displayed beside or above the natural results of the search, the internet user may, if he does not immediately disregard those links as being irrelevant and does not confuse them with those of the proprietor of the mark, perceive those advertising links as offering an alternative to the goods or services of the trade mark proprietor.
69. In that situation, characterised by the fact that a sign identical with a trade mark is selected as a keyword by a competitor of the proprietor of the mark with the aim of offering internet users an alternative to the goods or services of that proprietor, there is a use of that sign in relation to the goods or services of that competitor.
70. It must be borne in mind, in that regard, that the Court has already held that the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter and to compare its own goods or services therewith, is use 'in relation to goods or services' for the purposes of Art.5(1) of Directive 89/104 (see O2 Holdings and O2 (UK), paras.35, 36 and 42, and L'Oreal , paras.52 and 53).
71. Without its being necessary to examine whether or not advertising on the internet on the basis of keywords which are identical with competitors' trade marks constitutes a form of comparative advertising, it is clear in any event that, as has been held in the case-law cited in the preceding paragraph, the use made by the advertiser of a sign identical with the trade mark of a competitor in order that internet users become aware not only of the goods or services offered by that competitor but also of those of the advertiser constitutes a use in relation to the goods or services of that advertiser.
"102. The Court has already held, in the case of offers of imitations for sale, that, where a third party attempts, through the use of a sign which is identical with, or similar to, a reputable mark, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark (L'Oreal, para.49).
103. That case-law is relevant in cases where advertisers on the internet offer for sale, through the use of signs identical with reputable trade marks such as 'Louis Vuitton' or 'Vuitton', goods which are imitations of the goods of the proprietor of those marks."
".. that the proprietor of a trade mark is entitled to prevent a competitor from advertising—on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor's consent—goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. Such use:
- adversely affects the trade mark's function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;
- does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark's advertising function; and
- adversely affects the trade mark's investment function if it substantially interferes with the proprietor's use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty."
"74. For its part, the concept of "taking unfair advantage of the distinctive character or the repute of the trade mark", also referred to as, inter alia, "free-riding", relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation (Case C-487/07 L 'Oreal [2009] ETMR 55 at [41]). "
"89. It is clear from those particular aspects of the selection as internet keywords of signs corresponding to trade marks with a reputation which belong to other persons that such a selection can, in the absence of any "due cause" as referred to in Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation 40/94, be construed as a use whereby the advertiser rides on the coat-tails of a trade mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark. If that is the case, the advantage thus obtained by the third party must be considered to be unfair (Case C-487/07 L 'Oreal [2009] ETMR 55 at [49]). "
"91. By contrast, where the advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward—without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark concerned—an alternative to the goods or services of the proprietor of the trade mark with a reputation, it must be concluded that such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned and is thus not without "due cause" for the purposes of Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation 40/94."
The judge's conclusions
"161. .. I also think that the use of "spec savers" in the first strapline gave Asda an advantage. The advantage was, at the very least, a reference point for its intended message - you will get a better deal at Asda than at Specsavers. That is what I consider to be its prime message. In doing that it is clearly referencing people's knowledge of Specsavers and its reputation for value.
162. However, I also consider it is doing more than that. While focusing on value (savings - "saver") it is referencing the brand in a wider way, simply because the brand connotes more than just value. It brings Specsavers to mind as a brand. That is inevitable, because it is a brand with a reputation. Furthermore, this was Asda's intention, and the case law renders intention significant. As described above, Asda intended to refer to value at least. There was considerable debate in, and as a result of, the evidence as to whether Asda intended to convey superiority or parity in areas other than value, namely range and professionalism (the other two pillars). I think that by the time Asda came to decide on, and to use, the straplines its main intended focus was on value, because that is what Mr Bendel told the team to do and that is what the first strapline really focuses on. However, that is not the entirety of the point. The reference to Specsavers was not accidental. It may have been intended to focus on value but calling the brand to mind in this way inevitably, and predictably, calls other aspects of it to mind. That is why it was done. Mr Langrish- Dixon's evidence demonstrates that the brand was to be brought to mind for some purposes, and once that is done it comes along with all its effects. Whether it is precisely the other two pillars, and to what extent, does not matter."
"174. First, the link. I consider that the link is there but is much weaker than with the first strapline. Specsavers' word mark, and therefore the brand, will be called to mind in a much weaker way. This is ultimately a matter of impression but I think the point is clear. I think it will be called to mind in a way which is much more redolent of a pure pun than is the case with the first strapline.
175. The weaker the link, the less likely unfair advantage or detriment that will be likely to be taken or caused - see L 'Oreal at para 44. That is the first problem for Specsavers. The second is an absence of evidence of detriment. There was no evidence at all, and none was plausibly suggested. Putting this mark in its context, and bearing in mind what I have already said about the pun-carrying quality of this mark, I do not think that Specsavers can make out a case of unfair advantage either. This mark does not use the concept of Specsavers as a value provider, or with any other qualities, so as to give it a leg up, as the first strapline does. I find that this mark does not infringe under Article 9(1)(c)."
"178. However, I have to consider the effect of the "living dangerously" evidence. The net result of that was a sign that did not copy the Specsavers sign, and was not close enough to cause confusion, but was one which the design team thought had a resonance with Specsavers. The word "resonance" is my summary of the effect of their evidence, and I consider it to be a fair summary. That was their intention; they are marketing professionals; and I give that view some weight. They thought that they had moved far enough away to be safe from a finding of infringement but that is a different point. I do not think that they thought they had moved a sufficient distance such that there was no resonance.
179. That resonance is capable of amounting to "bringing to mind" within the test. The extent to which that is true depends on the degree of resonance. I have to make a judgment about that. On the basis of that evidence I think that although there is probably just a calling to mind, it is of the very weak variety. It will be more of a vague impression than a firm implantation.
.....
182. ... I am prepared to accept, for these purposes, that a mark of repute is capable of operating at a number of psychological levels. The Asda design team understood that and thought that what was left of their logo after the lawyers had had a go at it still had an effect. That is evidence of a link."
"183. It is, however, very weak. It arises out of the shapes of the ovals and no more. It is heavily countered by the Asda wording. I suppose that, although it is weak, it might be thought to carry some advantage (that would, after all, be the purpose of going for an association) but in my view it is by this time a very slight one, and is too slight to be unfair notwithstanding that it might be thought to have been intended. Nothing else makes it unfair. There is no question of detriment to Specsavers' mark arising out of it.
184. I reach this conclusion despite the colouration of the logo on the recall card. It seems to me that notwithstanding the fact that colour is of only limited relevance in a 9(1)(b) infringement, it might have more of a part to play in relation to Article 9(1)(c). If the proprietor's mark has a strong reputation in a given colour, to produce a similar resonating mark in a similar colour might reinforce the link, or reinforce the fairness case. However, I do not consider that I need to go into that question in this case. Even allowing for the colour green used in the logos I still think that the link is weak, any advantage is very slight and the advantage is not unfair. This applies to both forms of the logo."
"186. Mr Bloch had his further case that the logo and straplines together had a combined effect. I do not think that the second strapline adds anything in this way to the logo. Whether or not the combination of the logo and the first strapline gives rise to a link and an unfair advantage is not something that I need to consider. The link and advantage arise out of the strapline by itself. A fortiori it exists if the logo is there too (as in the instore deployment of both together) but it is unnecessary for me to consider whether or not this means that the logo acquires an infringing capability - an infringement has already been established."
The appeal
Non use
"The first part of the necessary enquiry is, what are the points of difference between the mark as used and the mark as registered? Once those differences have been identified, the second part of the inquiry is, do they alter the distinctive character of the mark as registered?"
"26. In regard to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark.
27. In order for the latter condition, which is at issue in the dispute in the main proceedings, to be satisfied, the mark in respect of which registration is sought need not necessarily have been used independently.
28. In fact Art.3(3) of the directive contains no restriction in that regard, referring solely to the "use which has been made" of the mark.
29. The expression "use of the mark as a trade mark" must therefore be understood as referring solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking.
30. Yet, such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking."
"23. Article 3(3) of Directive 89/104 permits registration of a mark if, following the use made thereof, it has acquired distinctive character. Mars and the Commission infer from this wording that use as an element of another mark may not be invoked as evidence of distinctive character for the purposes of Article 3(3) of Directive 89/104 . This view of the matter does not carry conviction since, as the Irish Government as well observes, use of a mark literally means both its independent use and its use as part of another composite mark.
24. Nor, contrary to the view of the United Kingdom Government, can any other inference be drawn from Art.10 of Directive 89/104. Article 10 et seq. concerns the loss of trademark protection as a result of non-use. A proprietor of a mark can, as a matter of trade mark law, reserve certain signs for his exclusive use only if he actually uses them. Structurally it would surely be wrong to recognise use for the acquisition of distinctive character but not to allow it to suffice in order to prevent the loss of trade-mark protection. Indeed, it is not precluded that use of a mark as part of another mark may also suffice in the context of Article 10. Under Article 10(2)(a) it also constitutes use if the trade mark is used in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. Use of a sign as part of a principal mark also comes within that definition. That part would indeed be registered not only as a part of the principal mark but also alone without the other elements of the principal mark though use of the principal mark would only differ in elements from the mark registered in respect of the part. Distinctiveness of that part would not be affected if, as a result of such use, it acquired distinctive character prior to its registration."
"31. In the present case the applicant submits that it is evident from the proof of use and of repute produced by the intervener that the latter used the earlier mark in a form different to the one under which it was registered. The earlier mark is used for bottles which have on their main and neck labels, in addition to the word 'cristal', the denomination 'Louis Roederer' several times, as well as a symbol that includes the letters 'l' and 'r' and some complementary figurative elements which appear several times. According to the applicant, the combination of the word 'cristal' with the denomination 'Louis Roederer', the letters 'lr' and the accompanying figurative elements substantially alters the identity of the earlier mark, especially when account is taken of the strong distinctive character of the words 'Louis Roederer', and does not constitute genuine use of the earlier mark CRISTAL. Therefore, the opposition filed by the intervener and, consequently, the contested decision are wholly unfounded.
32. The Court of First Instance points out, first, following the example of OHIM, that the applicant does not contest the place, time or extent of use of the earlier mark but only the nature of that use.
33. In the contested decision the Board of Appeal found that there is no precept in the Community trade mark system that obliges the opponent to prove the use of his earlier mark on its own, independently of any other mark. According to the Board of Appeal, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer's company, as is the case particularly in the context of the automobile and wine industries.
34. That approach must be followed. The situation is not that the intervener's mark is used under a form different to the one under which it was registered, but that several signs are used simultaneously without altering the distinctive character of the registered sign. As OHIM rightly pointed out, in the context of the labelling of wine products joint affixing of separate marks or indications on the same product, in particular the name of the winery and the name of the product, is a common commercial practice.
35. In the present case the mark CRISTAL appears clearly four times on the neck of the bottle marketed by the intervener and twice on the main label, accompanied by the symbol (r). On the neck that mark is separate from the other elements. In addition, the mark CRISTAL appears alone on the boxes in which bottles of the mark CRISTAL are marketed. Equally, on the invoices produced by the intervener reference is made to the term 'cristal' with the mention '1990 coffret'. It should be noted that the mark CRISTAL thus identifies the product marketed by the intervener.
36. As regards the mention 'Louis Roederer' on the main label, it merely indicates the name of the manufacturer's company, which may provide a direct link between one or more product lines and a specific undertaking. The same reasoning applies to the group of letters 'lr' which represents the initials of the intervener's name. As pointed out by OHIM, joint use of those elements on the same bottle does not undermine the function of the mark CRISTAL as a means of identifying the products at issue.
37. Furthermore, OHIM's finding that the use of the word mark together with the geographical indication 'Champagne' cannot be considered to be an addition capable of altering the distinctive character of the trade mark when used for champagne must be endorsed. In the wine sector the consumer is often particularly interested in the precise geographical origin of the product and the identity of the wine producer, since the reputation of such products often depends on whether the wine is produced in a certain geographical region by a certain winery.
38. In those circumstances it must be held that the use of the word mark CRISTAL together with other indications is irrelevant and that the Board of Appeal did not infringe Art.15(2)(a) of Regulation No 40/94, Article 43(2) and (3) thereof, or Rule 22(2) of the implementing regulation .
the goods and services offered through its stores and it matters not that it has always been used in combination with another other element, namely the word Specsavers.
"Article 15(2)(a) does not allow the proprietor of a registered trade mark to avoid his obligation to use the mark by relying in his favour on the use of a similar mark covered by a separate registration."
"81. Under Article 15(1) of Regulation 40/94 , a trade mark which has not been put to genuine use during the relevant period is subject to the sanctions provided for in that Regulation, unless there are proper reasons for non-use.
82. Under Article 15(2)(a) of that Regulation, use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered also constitutes use within the meaning of Article 15(1) .
83. Those provision[s] are essentially the same as those in Article 10(1) and (2)(a) of Directive 89/104 to approximate the laws of the Member State relating to trade marks.
85. In that regard, it must be held that the Court of First Instance did not commit any error of law in disregarding the appellant's argument that use of the trade mark Bridge (no.370836) during the reference period was established by evidence adduced for the purpose of demonstrating use of the trade mark THE BRIDGE (no.642952).
85. Without it being necessary to examine whether the trade mark THE BRIDGE (no.642952) may be regarded as being different solely by reason of elements which do not alter the distinctive character of the trade mark Bridge (no.370836), it must be stated that use of the former mark has not been established and cannot therefore in any way serve as evidence of use of the latter.
86. In any event, while it is possible, as a result of the provisions referred to in paragraphs 81 and 82 of the present judgment, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former."
A. Where a trader has separate registrations of Community trade marks for
(i) a graphic device mark;
(ii) a word mark;
and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Article 15 of Regulation 40/94? If yes, how is the question of use of the graphic mark to be assessed?
B. Does it make a difference if:
(i) the word mark is superimposed over the graphic device?
(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?
C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?
Wordless logo - infringement
D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours in which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1)(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 40/94? If so, how?
E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?
Conclusion
i) allow Specsavers' appeal in respect of the allegation that the second strapline infringed the Word marks and the Shaded and Unshaded logo marks under Article 9(1)(c);
ii) allow Specsavers' appeal in respect of the allegation that the Asda logo infringed the Shaded and Unshaded logo marks under Article 9(1)(c) when used as part of the composite campaign;
iii) dismiss Specsavers' appeal in respect of the allegations that the first and second straplines and the Asda logo infringed the Word marks and the Shaded and Unshaded logo marks under Article 9(1)(b);
iv) dismiss Asda's cross appeal against the finding that the first strapline infringed the Word marks under Article 9(1)(c).
Specsavers Word marks
CTM Nos. 1321298 & 3418928
Specsavers Shaded logo marks
CTM Nos. 449256 & 1321348
Specsavers Unshaded logo mark
CTM No. 5608385
Specsavers Wordless logo mark
CTM No. 1358589
Asda Logo
e.g. (from poster):
With colours reversed on the recall card:
The first strapline
e.g. (from billboard):
The second strapline
e.g. (from in-store leaflet):
Lady Justice Black:
The President of the Queen's Bench Division: