Readers with long memories and lawyers-turned-shelf-fillers will remember the IPKat's posts last year on a thoroughly respectable law firm making a bit of a spectacle of itself in the dispute between Specsavers International Healthcare and Asda Stores (see here and here). Late last week came news that Mr Justice Mann was giving judgment in the sequel, Specsavers International Healthcare Ltd v Asda Stores Ltd  EWHC 2035 (Ch), a decision of the Chancery Division for England and Wales.
High-street budget optician chain Specsavers sued Wal-mart's UK avatar Asda Stores for infringing its SPECSAVERS word and figurative trade marks and for passing off. What had Asda done to deserve this attention? It opened some opticians' stores in its supermarkets, marketing them with a campaign featuring logos consisting of non-overlapping white ovals with "Asda Opticians" written on them in a light green colour favoured by Specsavers but which was not specified in its non-colour-specific trade mark registrations. Its promotional material carried straplines which really invited trouble: "be a real spec saver at Asda" and "spec savings at Asda" [Readers who can't spot the bit that annoyed Specsavers should get their eyes tested, says Merpel]. There was evidence that Asda (i) initially planned to parody Specsavers' logos and advertising, thus inviting the public to compare its offering to that of Specsavers in a fairly blatant manner and (ii) took legal advice on whether Specsavers could legitimately object to various designs and straplines, before choosing those which led to this action.
Mann J gave judgment in part in Specsaver's favour.