Asda has just been taught this lesson in the Court of Appeal. The case focused on whether the Asda Optician’s oval logo and straplines: ‘Be a real spec saver at Asda’ and ‘Spec savings at Asda’ were confusingly similar to Specsavers’ registered trade marks (they weren’t) or took unfair advantage (they did). However, there are also three key practical points which came out of the case and are important for anyone hoping to navigate through a similarly aggressive advertising campaign or thinking about bringing a claim for trade mark infringement.
Lesson 1: Be careful how you brief your marketing team
Asda’s marketing team was originally given a general brief to highlight a number of key features of Asda’s Opticians. However, this quickly focussed on Specsavers as the key competitor and the messages changed to “…launch a full on assault of Specsavers…” before backing off a little to become “We do not want to be seen to be copying Specsavers (eg copying logo, colours too closely) as this could make us seem desperate/the poorer cousin and makes us an easy target for them!”.
If you do run an aggressive marketing campaign designed to get close to a competitor, there is a reasonable risk it will go to court. In court proceedings, the parties have to hand over any relevant documents and emails to the other side. The marketing team can be called as witnesses and cross examined.
This evidence can be embarrassing and in some cases can fatally damage your case. In Asda’s case, the documents helped the judge decide that Asda had intended to live dangerously and, in the Court of Appeal, the judges decided that this together with other factors showed Asda was taking an unfair advantage of Specsavers' trade marks. The fact that Asda’s final position had been to avoid copying did not help them because they were rowing back from a position which was too close to Specsavers. In other cases, judges have found that companies intended to cause deception and deliberately take another company’s goodwill. This is a swift way to lose a trade mark infringement and passing off case.
If a marketing briefing does have to focus on a competitor, don’t write anything in it which you would not be prepared to hear read back to you in court. It is also a good idea to brief the marketing team at the beginning that any campaign should not infringe competitors' trade marks.
Lesson 2: Comparative advertising may be a safe harbour
Although Asda’s marketing materials were not confusingly similar to Specsavers’ trade marks, Asda still lost because it took unfair advantage of Specsavers’ trade marks. What constitutes unfair advantage has to be considered in the round and is more likely the more distinctive the trade marks and the more similar the goods or services. In an earlier case (L'Oreal v Bellure) the European Court of Justice described this as free riding and it can be hard to avoid.
Although sometimes difficult in practice (Asda thought it would be too hard to substantiate its prices were cheaper than Specsavers), comparative advertising does provide an exemption to trade mark infringement. This is true not just for a competitor’s exact trade mark but also ones similar to it (as Hutchison established by using O2-like bubbles, but not the exact trade mark). You still have to do a fair comparison, but by doing so this can actually help demonstrate a differentiation between your brand and a competitor’s. This helps to avoid confusion and can help with avoiding taking an unfair advantage.
Lesson 3: Use each of your trade marks on their own (some of the time)
In the High Court, Specsavers had its oval logo trade mark revoked because they could not show they had used it within a 5 year period. Specsavers always used the oval logo with the word Specsavers on it (this combination was another registered trade mark so the judge decided it could not also count as use of the logo alone). The Court of Appeal referred several questions to the European Court of Justice, including whether Specsavers' use of its oval logo with Specsavers written across it counted as use of the oval logo on its own. While this question remains unanswered, and it may take some time before the European Court of Justice actually gives its decision, companies would be well advised to make sure that they use each of their trade marks individually even if they usually use them in combination. If you cannot show use of your marks you may not be able to enforce them.
By adopting these three lessons, companies should find it easier to avoid the sense of sea sickness which comes from losing a large trade mark infringement claim.