Fashionista was interested to read about the ‘unusual’ decision handed down by the Court of Appeal last week in the matter of Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited at [2015] EWCA Civ 220. Despite finding likelihood of confusion and damage to distinctive character, a 2-1 majority accepted ASOS’s ‘own name’ defence and therefore found no trade mark infringement.

Parties

As every Fashionista knows, ASOS is an extremely successful global online retailer of fashion and beauty goods. Its name is an acronym of ‘As Seen On Screen’, the original name of the business before rebranding in the early 2000s. Assos is a Swiss company which manufactures and sells premium cycling clothing (it produced the first pair of lycra cycling shorts). It owns the CTM ‘ASSOS’ registered in classes 3, 12 and 25.

Assos issued proceedings in the UK against ASOS for trade mark infringement and passing off. ASOS argued that the ‘ASSOS’ CTM should be partially revoked for non-use.

In separate proceedings, Assos had opposed ASOS’s CTM application. In 2014, OHIM accepted Assos’s opposition and therefore rejected ASOS’s application. This was upheld by the EU General Court. The judgment can be read here, and IPKat commentary here.

First instance

At first instance, Justice Rose decided in favour of ASOS, partially revoking Assos’ CTM specification for non-use. In particular, the class 25 general specification wording of ‘clothing, footwear, headgear’ was amended to “specialist clothing for racing cyclists; jackets, t-shirts, polo shirts, track-suit tops, track-suit bottoms, casual shorts, caps”.

The judge ruled that there was no likelihood of confusion, having regard to the available survey evidence and ASOS’s use of the mark, nor any risk of detriment to the ASSOS mark or unfair advantage taken by ASOS. Finally, the claim for passing off was dismissed. Given that no infringement was found, Rose J decided it was unnecessary to decide whether ASOS’s “own name” defence applied. Both parties appealed.

Court of Appeal

Overturning Rose J’s decision, the court unanimously found that ASOS had caused damage to the distinctive character of ‘ASSOS’, and that there was a likelihood of confusion in relation to notional and fair use across the breadth of the specification (Rose J had only considered actual use of the mark).

The court was split on the extent to which the trade mark specification should be revoked. Underhill LJ and Kitchin LJ held that with the exception of the deletion of “racing”, the goods covered by the mark should be as found at first instance. Dissenting, Sales LJ held that the category “casual clothing” was appropriate as it was the smallest category encompassing the selection of items on which use had been proved.

The same majority accepted ASOS’s ‘own name’ defence, finding that the acronym had been innocently adopted, and that on balance ASOS had fulfilled their duty to act fairly in relation to the claimants’ legitimate interests and had not conducted their business so as to unfairly compete with the claimants. Dissenting, Sales LJ noted that ASOS did not conduct reasonable checks to satisfy the ‘honest practices’ requirement (only undertaking Google searches rather than trade mark checks for ‘asos’), and had expanded their business after becoming aware of Assos’s CTM.

Bird & Bird, representing Assos, have stated that they will appeal to the UK Supreme Court to overturn the part of the ruling accepting ASOS’s “own name” defence.

By: mang
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