Trade mark infringement; when Specsavers went shopping

A dispute alleging trade mark infringement between Supermarket giant, Asda, and Specsavers will go to trial in April under an expedited process granted by the High Court on the grounds that the court had “sufficient evidence” that Asda threatened the reputation of its rival.

In the case, reported Tuesday in Times Online, Specsavers claimed that Asda infringed its trade mark when it ran an online and in-store advertisement claiming: “Be a real specs saver at Asda.”

Guernsey-based Specsavers argued the slogan was sufficiently similar that it was likely to confuse consumers.

The company also objected to Asda’s use of two elliptical shapes used by Asda in its signage, which carried the words “Asda” and “Opticians” as similar and also likely to confuse. Specsavers registered trade mark includes two green ellipses with “Specsaver” across the two shapes in white lettering

Under s10(2)(b) of the Trade Marks Act 1994, an infringement of a registered trade mark occurs when the sign is similar to the registered trade mark and is used in relation to goods and services that are either identical with or similar to those goods or services which the trade mark is registered, and there exists a likelihood of confusion on the part of the public.

In its application, Specsavers had argued for the trial to be set down as early as January 2010.

Lawyers for Asda, Pinset Mason, pushed for a later date, claiming that as part of its trial preparation, its lawyers would be working on the floor of Asda’s stores to gain a better grasp of their client’s business. Part of the work would include a retail survey to establish whether customers were confused by the two, competing trademarks.

In light of this week’s hearing Asda has said it intends to withdraw the logo, ‘Be a better specsaver’ but it will continue to use the elliptical logos.

The case coincides with a campaign by Asda to offer its customers a flat rate for its glasses of either £50 or £70 regardless of the strength of the lenses.

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