Specsavers V Asda – the importance of trade marks and non-infringement
Posted by Julie Alchin on 27th February 2012
The recent court battle between Specsavers and Asda is illustrative of the value of trade marks and the importance of using them to protect your own intellectual property.
Asda adopted slogans such as “be a real spec saver at Asda” and “spec savings at Asda” within their in-store opticians. Initially Specsavers approached Asda directly to inform them that they were infringing upon their trade marks. Asda were unwilling to recognise this fact and their response was along the lines of “so sue us”. So, Specsavers did. Perhaps unsurprisingly Specsavers won – Asda were found to have infringed Specsavers’ trade marks and as a direct consequence they now face paying a costly damages bill to Specsavers.
So…….what exactly is a trademark and why are they so valuable? Essentially a trademark is a sign that indicates who the product is made by and differentiates products from those of others, namely competitors. The first trade marks were employed by potters – a simple thumb print was embossed into the side of the pot to indicate “I made this”. Since then, trade marks have developed significantly but the essential message they convey remains the same. For example, when Christian Louboutin applies his red sole trademark to his coveted shoe designs the essential message is still “I made this”. At a quick glance the trademark conveys multiple important messages to the consumer: in the above Christian Louboutin shoe example, the consumer immediately sees who the shoes are made by, they can be confident that the product comes from a trusted source and is also assured that the shoes are authentic. The consumer is willing to pay a premium for this level of trust and confidence represented by the trademark.
In terms of protecting your own products, trademark law in the UK potentially affords protection to “any sign which can be represented graphically which is capable of distinguishing goods or services of one undertaking from those of another” (S1(1) Trade Marks Act 1994). Numerous elements of products and brands are capable of being a trademark. For example, a trademark may consist of words such as “Marks & Spencer”. Trade marks may also be shapes such as the glass Coca Cola bottle, or internet domain names like “lastminute.com”. Your mark must be registered to obtain a trademark for your products. Upon registration you will be afforded protection for periods of 10 years subject to renewal and you will have a monopoly right to exploit that trademark. Consequently if you have a registered trademark, the potential economic benefit is bountiful.
As well as protecting your own marks, it is essential to ensure that you do not infringe the trade marks of others. This can be done by a simple trade marks search. If you are infringing another’s trademark the owner of that trademark is likely to take action against you. Failure on the part of the trademark owner to take action against infringement will weaken the commercial value of their trademark. As Asda have discovered to their detriment, trademark infringement can be costly.
The current economic climate has caused an increase in competition for business. Exploiting your own trade marks whilst also avoiding infringement of other trade marks is a powerful weapon in the battle for commercial survival.