Specsavers International Healthcare Ltd & Ors v Asda Stores Ltd

This is the judgment of the court in relation to various outstanding matters following our main judgment [2012] EWCA Civ 24. They are:

The order for the injunction is agreed between the parties in the following form save for the inclusion of the words “or otherwise howsoever”:

“The Defendant is restrained (whether acting by its directors, officers, servants or agents or any of them) from infringing the following Community Trade Marks or any of them:

(i)

CTM 1321298

(ii)

CTM 3418928

(iii)

CTM 449256

(iv)

CTM 1321348

(v)

CTM 5608385

whether by use of the straplines ‘Be a real spec saver at Asda’, ‘Spec savings at Asda’ or the logo comprising two adjacent ellipses or otherwise howsoever. Nothing in the foregoing shall prevent the Defendant from making any reference to SPECSAVERS in lawful comparative advertising in accordance with EC Directive 2006/114/EC concerning misleading and comparative advertising.”

Specsavers submits the words “or otherwise howsoever” should be included because without them the injunction would be limited to the precise form of the offending use. Asda, it continues, should not be permitted to use a different strapline including the phrase “spec saver” or a variant of it. Nor should Asda be permitted to use the Asda logo or a variant of it in other offending ways. But it accepts that it is appropriate to include an express proviso permitting lawful comparative advertising.

Asda contends the words “or otherwise howsoever” should be omitted because Asda has long since stopped using the straplines and the Asda logo. Further, such an injunction would be too uncertain in scope and would be contrary to the direction made by this court on 14 February 2012.

Section 37(1) of the Senior Courts Act 1981 confers upon the court a general discretion to grant an injunction in all cases where it appears to the court to be just and convenient to do so. In exercising its discretion the court must have regard to all relevant circumstances.

As a starting point, the court will have in mind that the jurisdiction to grant an injunction is preventive and will only be exercised if the court is satisfied that a person threatens and intends to do a wrongful act. If the proprietor of a registered trade mark establishes that a defendant has infringed that mark then, as a general rule, an injunction will be granted against him because he has evinced an intention to engage in an infringing activity. On the other hand, if it appears from all the circumstances that the defendant presents no such threat and there is no risk of further infringement then an injunction will be refused.

The court will also be concerned to ensure that any injunction is appropriate and proportionate in the light of all the facts of the case and is drafted in such a way as to define as clearly as possible what it is that the defendant may not do.

When infringement of a registered trade mark has been established then an injunction in the general form sought by Specsavers will often be appropriate, as Millet J (as he then was) explained in Spectravest Inc v Aperknit Ltd [1988] FSR 161 at 174 - 175:

“In intellectual property cases a plaintiff is concerned not only to stop exact repetition of the defendant’s current activity which can be described with particularity, but to prevent fresh invasions of his rights in ways which cannot be foreseen or described exactly. The ingenuity of those who infringe copyright and trade marks and engage in passing off is boundless, and plaintiffs cannot be adequately protected by orders which are cabined or confined. That is the reason for the standard forms of injunctions in such cases, with their inevitable references to “otherwise infringing,” “substantial part,” “to like effect,” “colourable imitation,” and “otherwise passing off”. Where a defendant, faced with such an order, acts honestly and reasonably, this will mitigate and even excuse a breach of the order; but if a breach is proved, it will be for him to mitigate or justify it, and his excuse may need to be thoroughly probed if the circumstances are suspicious.”

Similarly, in Coflexip S.A. v Stolt Comex Seaway MS Ltd [2001] RPC 9 this court allowed an appeal against the grant of a limited form of injunction in a patent action, explaining that the general form of injunction does, in general, provide a fair solution. Aldous LJ put it this way at [19]-[21]:

“19.

The judge seemed to believe that injunctions which restrained infringement of a patent were broad injunctions: but they equate to the statutory right given; a right which has been held to have been validly granted and infringed. The injunction granted by the judge would allow the defendant to do other acts even though they may infringe. The defendant in those circumstances would be better off in that a change from that which is described and shown in the process description would allow him to continue in business without having to seek guidance from the court before adopting the change. The advantage to the defendant of only having the injunction cover a particular article or process is clear. If he makes a change he will not be in breach and it will be up to the patentee to bring another action. However, the disadvantage to the patentee is equally clear. To obtain an injunction he has to establish his monopoly and that it has been infringed, and the judge must conclude that further infringement is apprehended. From his point of view, it is the infringer who should seek guidance from the court if he wishes to sail close to the wind. In the normal course of events that would be reasonable.

20.

The usual form of injunction which protects the right established by the patentee, with its ambit construed by the court, does in general provide a fair solution. However, each case must be determined on its own facts and the discretion exercised accordingly.

21.

In the present case, nothing has been brought to my attention which would suggest that anything other than the usual form of injunction would be appropriate. The injunction suggested by the judge was in my view inappropriate.”

The court will always have in mind that the scope of any injunction must be fair to the defendant and should not extend any further than necessary. If, for example, an injunction in general form would have the practical effect of stifling a legitimate business then it may be appropriate to craft a qualified injunction, as in Sun Microsystems Inc v Amtec Computer Corp [2006] FSR 35. All must depend upon the circumstances of the particular case.

In this case Specsavers has established infringement of its registered trade marks under Article 9(1)(c) of the Community Trade Marks Regulation (Council Regulation (EC) 207/2009) by the use of both straplines and by the use of the Asda logo as part of the composite advertising and promotional campaign. The allegation of infringement under Article 9(1)(b) has been rejected entirely, as has the allegation of infringement by the use of the Asda logo when used independently of the straplines. All of these findings and the reasons for them are set forth fully in the main judgment and are reflected in the declarations we propose to make.

We are also conscious that Asda and Specsavers were and remain competitors and that the campaign in which the offending signs were used was specifically targeted by Asda at Specsavers. The conception and development of the campaign are detailed in the main judgment but, in summary, involved the use of the Asda logo which was intended to have resonances to Specsavers’ logos, and the straplines which contained a deliberate reference to Specsavers. Overall, Asda’s intention was to convey a reference to Specsavers’ attributes in the areas of range, professionalism and price.

We recognise that Asda’s campaign is, in a sense, historical in that it ran for a six week period in 2009. Moreover, the order of Mann J of 6 October 2010 contained an injunction from trial to the appeal restraining the use of the first strapline and any slogan or other phrase in advertising or promotion which included the words “spec saver” or which made any reference to the trade mark “Specsavers”. However, Asda and Specsavers remain competitors and Asda has never offered an open undertaking in respect of its future marketing activities.

Accordingly we have no doubt that it is appropriate to grant the general form of injunction sought by Specsavers in respect of the straplines. Such an injunction is necessary to prevent Asda from adopting straplines which incorporate some slight variation of the phrases “spec saver” and “Spec savings” but are equally offensive.

As for the Asda logo, we recognise that an injunction in respect of the straplines would prevent the possibility of a repetition of the composite campaign. However, in the light of the history of the conception and development of the campaign as related in the main judgment, we are entirely satisfied that Specsavers does reasonably and properly apprehend that, unless restrained, Asda will use the Asda logo in other contexts or in different forms which would also constitute an infringement of Specsavers’ logo marks.

As for the certainty of the general form of injunction sought by Specsavers, Asda has the benefit of the main judgment and the declarations we propose to make. It also has the benefit of the proviso. Moreover, it has an intimate understanding of the market.

In all these circumstances we have come to the conclusion that Specsavers is properly concerned to prevent further invasion of its trade mark rights in ways which it cannot foresee or describe with greater precision but which Asda has shown itself, by the careful and lengthy preparation of the campaign, to be fully capable of devising. We are therefore satisfied that it is necessary and proportionate to grant an injunction in respect of the Asda logo in the general form sought by Specsavers.

Finally, we must deal with the submission that an injunction in this general form does not comply with the direction made by this court on 14 February 2012. That direction stated that “the order is to embody an injunction to restrain infringement of the relevant CTMs by use of the Asda logo because it could be used in other offending ways”. In making this direction we had in mind the possibility of the use by Asda of the Asda logo in other contexts or in different forms and accordingly we do not accept that the injunction sought by Specsavers would be inconsistent with it. To the contrary, such an injunction would give effect to it.

Asda seeks permission to appeal to the Supreme Court on the ground that the injunction we propose to grant is not justified by the infringement found. Asda submits that the proposed appeal seeks to address a fundamental issue, namely the proper approach to the scope of injunctions in intellectual property cases. It submits this is an important point of practice and principle.

We are unable to accept this submission. The principles upon which the court will grant an injunction in intellectual property cases are exactly the same as those which apply in other cases. An injunction is granted to prevent future wrongs, not as punishment for past wrongs. Accordingly, there must be a threat or risk of further infringement. Moreover, an injunction must be proportionate and drafted in terms which are as clear and unambiguous as the circumstances permit. In cases involving intellectual property, as in other cases, the court will exercise its discretion having regard to these principles and all the circumstances of the case.

Accordingly, permission to appeal to the Supreme Court must be refused.

The following issues arise:

Asda’s primary position is that costs should be reserved pending the outcome of its application for permission to appeal to the Supreme Court and, if permission is given, pending the determination of that appeal. The reason it takes that position is this. Asda made a Part 36 offer on 16 December 2009. That offer was directed to the straplines only and contained this sentence:

“No offer is made in respect of CTM 589 or the sign comprising two side by side ellipses as referred to at paragraph 11 of the Particulars of Claim [the Asda logo]”.

Asda recognises that this offer is not effective given the judgment of this court and the order we propose to make. It further submits that the position now is similar to that at the conclusion of the first part of a split trial. In such a case, if the court is told that there has been no payment in, then the court is free to exercise its discretion to award costs in relation to the preliminary issue. However, if it is told there has been a payment in, then, in any but perhaps the most exceptional case, the court must generally reserve the question of costs until after its final determination: HSS Group plc v BMB Ltd [2005] EWCA Civ 626, [2005] 1 WLR 3158, per Waller LJ at [35].

We do not believe it is appropriate to reserve all the costs. True it is that Asda intends to seek permission to appeal to the Supreme Court. But the position now is quite different from that at the conclusion of the first part of a split trial because this court has now made a final determination of all issues concerning liability, save for those in relation to which we intend to refer questions to the Court of Justice of the European Union. We therefore see no reason to defer a consideration of the appropriate order to make in relation to the costs of those aspects of the appeal we have decided.

The general principles which must guide the court in exercising its discretion as to costs are well established and are set forth in CPR Rule 44.3. So far as relevant to this case, we particularly have in mind the following.

The court has a discretion as to whether costs are payable by one party to another; the amount of those costs; and when they are to be paid. If the court decides to make an order about costs the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but the court may make a different order. In deciding what order to make about costs, the court must have regard to all of the circumstances, including the conduct of all the parties; whether a party has succeeded on part of his case, even if he has not been wholly successful; and any payment into court or admissible offer to settle made by a party which has been drawn to the court’s attention, and which is not an offer to which costs consequences under Part 36 apply.

The conduct of the parties includes the conduct before and during the proceedings; whether it was reasonable for a party to raise, pursue or contest a particular allegation or issue; the manner in which a party has pursued or defended his case or a particular allegation or issue; and whether a claimant who has succeeded in his claim, in whole or in part, exaggerated his claim.

The orders which the court may make include an order that a party must pay a proportion of another party’s costs; a stated amount in respect of another party’s costs; costs relating to particular steps taken in the proceedings; and costs relating only to a distinct part of the proceedings. Where the court would otherwise consider making an order in respect of a part of the proceedings it must instead, if practicable, make an order that a party must a pay a proportion of another party’s costs or costs from or until a certain date only.

The CPR and associated practice directions apply as much to intellectual property cases as they do to any other kind of case (subject to certain statutory provisions which have no bearing on this case). However, intellectual property cases are perhaps a little unusual in that they frequently involve a large number of issues and considerable costs. The present case is no exception. So far as patent actions are concerned, this court considered the application of the general principles to which we have referred in SmithKline Beecham v Apotex [2004] EWCA Civ 1703, [2005] FSR 24:

“Costs of Patent proceedings and the CPR

24.

In respect of all intellectual property matters the general rule is that the CPR and associated practice directions apply, unless a rule in Part 63 or its practice direction provides otherwise (CPR 63.2). There is no such rule. So, subject to the two statutory provisions discussed above, the general rules apply as much to patent actions as to any other action.

25.

It follows that all the factors and matters set forth in CPR 44.3 apply to how the court should exercise its discretion as to costs. Prior to the CPR a party who was successful overall was not normally deprived of its costs of an issue it took unsuccessfully unless it has done so unreasonably, see Re Elgindata (No. 2) [1992] 1 WLR 1207. But since the CPR a more issue-by-issue approach is appropriate, see Summit Property v Pitmans [2001] EWCA Civ 2020, applied in a patent action, Stena v Irish Ferries [2003] EWCA Civ 214. Even before the CPR an issue-by-issue approach was, as an exception to the Elgindata approach, applied in patent actions because of the "large number of issues and the very extensive costs that can be incurred" per Aldous LJ in Rediffusion v Link-Miles [1993] FSR 369 at 410.

26.

An issue-by-issue approach is therefore one that should be applied so far as it reasonably can. On the other hand such an approach is not the be-all and end-all. Whether or not "it was reasonable for a party to raise, pursue or contest a particular allegation" remains a relevant factor to be taken into account as part of the conduct of the parties (see CPR 44 rule (4)(a) and (5)(b)).

The impossibility of great precision

27.

Before turning to this particular case I should say something about this. Although an issue-by-issue approach is likely to produce a "fairer" answer and is likely to make parties consider carefully before advancing or disputing a particular issue, it should not be thought that it is capable of achieving a "precise" answer. The estimation of costs, like that of valuation of property, is more of an art than a science. True it is that one can measure certain things (such as pages of witness statements or transcript devoted to a particular issue) but they can only be indicia to be taken into account. It would be dangerous to rely upon them as absolutes. Indeed brevity of a document, or a cross-examination, may be the result of great care: was it Hazlitt who apologised for the length of a letter, excusing himself on the grounds that he had not enough time to compose it?

28.

It follows that there is no "precise" figure of costs which, in theory with perfect measurement tools, one could reach. The best that can be achieved is an estimate which is necessarily going to be somewhat crude.”

The following concise statement by Floyd J in Qualcomm v Nokia [2008] EWHC 777 at [6] is also helpful:

“The correct approach is to ask oneself three questions. First of all, who has won; secondly has the party that has won lost on an issue which is suitably circumscribed to deprive that party of the costs of that issue and, thirdly, is the case a suitably exceptional one to justify making a costs order on that issue against the party who has won overall.”

In our judgment exactly the same principles apply to proceedings for infringement of registered trade marks and we turn now to consider their application in this case.

Specsavers’ costs of the appeal are about £374,550. It contends that it has been successful overall and accordingly should recover all of those costs save for those wholly attributable to the Article 9(1)(b) case in respect of which it has been unsuccessful, and the costs of the issues to be referred to the Court of Justice which, it accepts, should be reserved. Overall, it says it should recover about £231,000, that is around 61.7% of its appeal costs, and that 18.7% of its appeal costs should be reserved until after the determination of the referred issues.

Asda has not disclosed its costs of the appeal and it takes the position that Specsavers has achieved very little, and nothing of substance. Accordingly, it says each side should bear its own costs.

We recognise that Specsavers has failed to established that the straplines or the Asda logo infringed any of its registered trade marks under Article 9(1)(b). Further, all issues relating to Specsavers’ Wordless logo mark have been stayed pending the reference to the Court of Justice. Nevertheless, Specsavers has succeeded in establishing that the second strapline and the Asda logo when used as part of the composite campaign infringed under Article 9(1)(c). And it has successfully resisted Asda’s cross appeal against the judge’s finding that the first strapline infringed under Article 9(1)(c). Overall Specsavers has therefore established that all aspects of the campaign amounted to an infringement, although in the case of the Asda logo only as part of the composite campaign. It has also secured relief, including injunctive and declaratory relief, in respect of both straplines and the Asda logo. In all these circumstances we believe that Specsavers is the overall winner but we recognise that it has lost a considerable number of issues.

Secondly, we must take into account the Part 36 offer. This was made by Asda in December 2009. At paragraph 2 of that letter, Asda offered the following undertaking:

“The Defendant undertakes not to use any of “the phrases” ‘SPEC SAVER’, ‘SPEC SAVERS’, ‘SPEC SAVING’, ‘SPEC SAVINGS’ ‘SPEC SAVE’ or ‘SPEC SAVES’ in its advertising or promotional materials for its optical goods or services …”

But the letter also contained the following important sentence to which we have already referred:

“No offer is made in respect of CTM 589 or the sign comprising two side by side ellipses as referred to at paragraph 11 of the Particulars of Claim [the Asda logo]”.

Specsavers has therefore secured wider relief than Asda offered, as Asda acknowledges. Moreover, Specsavers submits, and we accept, that its complaint about the Asda logo was a very important part of its case. It wished to establish that the logo was an infringement and to secure relief in respect of it, both for the purpose of its immediate dispute with Asda and for its wider commercial position within the market place.

Nevertheless, we also recognise that Specsavers did not engage with Asda in relation to its offer and made no attempt to negotiate with Asda as to possible restrictions on the use of the Asda logo. This is a matter which we believe it is proper to take into account and which justifies a reduction in any award of costs to Specsavers.

We must also have regard to the way the parties have behaved more generally. This has been particularly hard fought litigation with the parties taking virtually every point open to them. Nevertheless, and bearing in mind the commercial importance of the case, and subject to our view about the Part 36 offer and Specsavers’ reaction to it, we believe the parties have behaved reasonably in raising, pursuing and contesting the various issues addressed in the main judgment and they have done so in a manner for which they cannot be criticised.

In all these circumstances we have come to the conclusion that Specsavers should have its costs of the appeal subject to a substantial discount to reflect the issues upon which it has lost and, to a lesser extent, its failure to engage with Asda in relation to its Part 36 offer. That discount should, we believe, include a proportion of the general costs and a proportion of the costs incurred in connection with the development of the campaign. Further, we accept that costs attributable to the issues to be referred to the Court of Justice of the European Union must be reserved.

We have given careful consideration to the evidence on the issue of costs given on behalf of Specsavers by Mr Antony Gold in his ninth witness statement dated 6 March 2012 and on behalf of Asda by Mr Iain Connor in his ninth witness statement dated 7 March 2012.

Mr Gold estimates that about 16.6% of Specsavers’ costs are general costs and then, using a page turning exercise, estimates that about 54% of non-general costs are attributable to issues which Specsavers has won. To these he adds the general costs and arrives at the claimed figure of 61.7% of Specsavers’ total appeal costs. Mr Connor has carried out a similar page turning exercise but estimates that only about 30-40% of the time was spent on issues which Specsavers has won and that overall at least half the time was spent on issues which Specsavers has lost.

We have to say our own impression of the appeal conforms more closely to the estimate of Mr Connor than to that of Mr Gold. Taking into account all of the evidence, our own impressions and the other matters to which we have referred, we have reached the conclusion that a fair and proportionate result would be achieved by awarding Specsavers 40% of its overall costs of the appeal.

In arriving at that figure we have taken into account the parties’ costs attributable to the referred issues. Specsavers estimates that 18.7% of its costs of the appeal are attributable to these issues; Asda has arrived at a rather more modest 14%. We believe the appropriate figure to be 16%. These costs must be reserved pending judgment on the referred issues.

Mann J ordered that the issue of the costs of the trial should be reserved until after the hearing of the enquiries as to damages or accounts of profits. Accordingly we do not have the benefit of his assessment as to where the costs burden should fall. However, Mr Gold and Mr Connor have addressed the issue of the costs incurred to the conclusion of the trial in the witness statements to which we have referred.

Once again, the parties have adopted very different positions. Specsavers says its costs to the conclusion of the trial are about £875,700. It argues that, as on the appeal, it is the successful party and should recover all of its costs save for the following. It accepts that it should not have its costs in so far as they have been increased by the claim under Article 9(1)(b) or for passing off. It also accepts that it must deduct costs incurred in dealing with the breach of confidence claim, which was apparently conceded at an early stage. And it again recognises that costs incurred in relation to the referred issues must be reserved. It says that, on this basis, it should recover about 78.5% of its costs at first instance with 5.5% being reserved.

Asda has once again not disclosed the costs it has incurred and contends that the calculation of the percentage of Specsavers’ costs to which its properly entitled is a complicated one and that the whole matter should be referred for a detailed assessment. Alternatively it says that there should be a “50% split” in costs, by which we understand it to submit we should make no order as to costs.

We believe the considerations to which we have referred in addressing the costs of the appeal apply also to the trial. For the reasons we have given we consider Specsavers is properly to be regarded as the winner but we must again take into account the parties’ behaviour, the Part 36 offer and Specsavers’ failure to engage with it, and also the very substantial costs incurred in relation to the Article 9(1)(b) and passing off claims.

We have therefore again come to the conclusion that Specsavers should have its costs at first instance subject to a very substantial discount to reflect the issues on which it lost and, to a lesser extent, its failure to engage with the Part 36 offer. The discount must, as before, include a proportion of the general costs and a proportion of the costs incurred in connection with the development of the campaign. So also, the costs of the issues to be referred to the Court of Justice must be reserved. Finally, Specsavers is plainly not entitled to any costs incurred in relation to the breach of confidence claim which, as we understand it, was conceded by Specsavers at an early stage in the action. We assume that these costs have been or are to be the subject of a separate order.

We have found the evidence of Mr Gold and Mr Connor of great assistance and we have again given it careful consideration. Mr Gold estimates that around 5.5% of Specsavers’ costs were incurred in relation to issues which have been referred and about 16% in relation to issues which it lost. The remaining 78.5% should, he says, be awarded to Specsavers.

Mr Connor, on the other hand, estimates that, considered in terms of pages, the evidence was overwhelmingly directed to the allegations of infringement under Article 9(1)(b) and passing off. Much of it related to the survey. Putting the survey on one side, about 47% of the written evidence was concerned with the development of the campaign, about 24% with Article 9(1)(b) and passing off and about 29% with Article 9(1)(c).

As for the written argument, Mr Connor estimates that about 52% was attributable to Article 9(1)(b) and passing off, about 18% to the development of the campaign and about 24% to Article 9(1)(c). Mr Connor also estimates that 29% of the time at the hearing was spent on Article 9(1)(b) and 23% on Article 9(1)(c).

In light of all this evidence we are satisfied that a substantially greater proportion of the costs incurred to the conclusion of the trial are attributable to the claims under Article 9(1)(b) and passing off than might appear from Mr Gold’s estimate. But so also we think that Mr Connor has adopted an unduly restrictive approach to his estimates of the time expended on the Article 9(1)(c) case and the general costs associated with it.

Inevitably we can only arrive at an estimate but doing the best we can in the light of all the matters to which we have referred, the evidence before us and our own assessment of the judgment, we believe that a fair and just result would be achieved by awarding to Specsavers 50% of its costs of the proceedings at first instance. In arriving at this figure we have considered the parties’ estimates of the costs attributable to the referred issues. Specsavers believes it to be 5.5%; Asda says 8%, on the basis of the written arguments. We consider the appropriate figure to be 6.5%. These costs must again be reserved pending the determination of these issues.

The court has jurisdiction to order a payment on account even though the costs have not been assessed. In all the circumstances of this case we are satisfied it is appropriate to make an order for a payment on account and we believe an appropriate payment would be 50% of the costs to which we believe Specsavers is entitled, based upon the estimates provided by Mr Gold. This is a sum which we feel confident Specsavers will recover on assessment and it should be paid within 28 days.

It follows: