Specsavers v Asda: Court of Appeal sets injunction terms and splits the costs
Specsavers International HealthcarevAsda Stores
- Court
- Court of Appeal
- Judgment
- 26 April 2012
- Citation
- [2012] EWCA Civ 494
Winning on your strongest point doesn't mean you recover all your costs if you lost on others.
Specsavers had already won its trademark infringement case against Asda over the "spec saver" advertising campaign. This follow up judgment decided how wide the injunction against Asda should be, and how much of its legal costs Specsavers could actually recover.
What happened
The Court of Appeal had already ruled, in the main judgment, that Asda's straplines and logo used in its "spec saver" advertising infringed Specsavers' Community trademarks (now EU trademarks) by taking unfair advantage of their reputation. This second judgment dealt with what came next. The parties could not agree on the exact wording of the injunction stopping Asda from repeating the conduct, whether Asda should be allowed to take the case to the Supreme Court, and how the costs of the whole dispute would be split given that Specsavers had lost on several other claims along the way.
What did the court decide in Specsavers International Healthcare v Asda Stores?
The court granted a broadly worded injunction covering the straplines and logo "or otherwise howsoever," reasoning that Asda had already shown it could come up with new variations on the offending campaign, so a narrow order limited to the exact wording already used would not properly protect Specsavers. It built in an exception allowing lawful comparative advertising. The court refused Asda permission to appeal to the Supreme Court on the scope of the injunction, finding no new point of legal principle at stake. On costs, it recognised Specsavers as the overall winner but noted it had lost on significant issues, including its claims under a different part of trademark law and its passing off claim, and had not engaged with a formal settlement offer Asda made about the logo. Specsavers was awarded 40% of its Court of Appeal costs and 50% of its costs from the first instance trial. Costs relating to issues still awaiting a ruling from the EU court were left undecided for the time being.
What we learned from this
- What I'd take from this is that a trademark win in the headline sense doesn't guarantee you get your money back. Specsavers won the case that mattered most to it, but lost on other claims along the way, and that cost it more than half its legal bill.
- Courts will often grant a wide injunction if a business has already shown a pattern of coming up with new variations on infringing conduct, rather than limiting the order to the exact wording already found unlawful.
- If the other side makes a formal settlement offer on part of a dispute, it's worth thinking carefully before ignoring it. It can affect how costs are split even if you win overall.
Things to be aware of
- This judgment deals only with the injunction wording and costs, not the underlying infringement finding, which was decided earlier in the main Court of Appeal judgment.
- Some issues, including a question about Specsavers' plain logo mark, were put on hold pending a ruling from the EU's top court, so costs on those points were left open rather than finally settled here.
- The 40% and 50% cost recoveries reflect the specific mix of wins and losses in this case. Other businesses in similar disputes won't necessarily get the same proportions.
The businesses involved
Specsavers International Healthcare Ltd
Part of the Specsavers group, a major optical retail chain operating across the UK and internationally. Holds Community trademarks (now EU trademarks) covering its name and logo.
Asda Stores Ltd
Registered in England since 1949 and still active, operating supermarket and retail stores. Holds its own portfolio of trademarks on the UK trademark register.
- Companies House
- 00464777 Active
- Incorporated
- February 1949
- Registered office
- Great Wilson Street
- Business activity
- Other retail sale in non-specialised stores
- UK trademarks
- 554
What happened next
- The case went on to the Court of Justice of the European Union, which ruled on questions about trademark use and colour. A trade press blog described that later ruling as a positive outcome for brand owners.Source: Thebrandprotectionblog, July 2013
What others said about it
- bgrow.com notes the case for the principle that a trademark with an established reputation enjoys wider protection than an ordinary mark.Source: Bgrow
How we can help
If something in this case sounds familiar, talk it through with us. The first call is free for new clients.
This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2012] EWCA Civ 494 on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 27 October 2026. Report an error.
