Specsavers triumphs in 5-year UK trademark battle with Asda

In 2010, the High Court found Asda had not breached Specsavers’ tradark based on its shape and revoked Specsavers’ wordless tradark.
Specsavers continued to fight the roval of its tradark in 2010 even though Asda was no longer in the frame.
The Court of Appeal asked the Registrar of Tradarks to stand in as an intervener in the July 2014 hearing in the absence of a defendant. The Registrar turned to the Treasury Solicitor.
Specsavers and Asda first locked horns in 2009 after Tesco launched an ad campaign including two ovals with text inside and the logo ‘be a real spec saver at Asda’. In 2010 the High Court ruled that Asda had infringed Specsavers’ tradark with its strapline. However the court concluded there was no confusion between Specsavers and Asda’s logos because there were significant difference in the shapes of the ovals used.
The court ruled that as Specsavers never showed its oval logo without the brand name superimposed, the wordless tradark should be revoked, which Specsavers appealed at the European Court of Justice.
The ECJ ruled that the use of a distinctive logo shape could count as an infringent and referred the matter back to the Court of Appeal to make a final decision. In place of Asda the Court of Appeal asked the Register of Tradarks to take the supermarket’s place.
At the July hearing, the judges were persuaded in part by the process Asda used to create its logo. In documents disclosed to the court the company’s marketing team generated three logos which it named “the Specsavers logo”, a second option “close to Specsavers” and “alternative logo – our own version.”
Giving lead judgment, Justice Kitchin concluded: “The wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers.”