We previously reported on the Court of Appeal decision in Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited at  EWCA Civ 220 - see "Assos told to get on it's bike by Court of Appeal" - in which on-line retailer Asos won an appeal that their trade mark should not be revoked on the basis of the 'own name' defence.
Following the Appeal decision to accept the 'own name' defence, Swiss clothing (predominantly cycling apparel) company Assos sought permission to appeal to the Supreme Court on 22 April 2015. The Court of Appeal has now refused permission.
At first instance the own name defence was not considered as there was no finding of infringement. The Court of Appeal reversed the High court's decision and ruled that there was a likelihood of confusion and damage to the distinctive character of ASSOS. However, the Court of Appeal held that Asos could avail itself using the own name defence.
The Court of Appeal was split as to whether Asos was entitled to rely upon the own name defence and a majority verdict from Lord Justice Kitchin and Lord Justice Underhill decided that the own name defence could be relied upon and that Asos had used the mark in accordance with honest practices. The Court's interpretation of honest practice was held to be "the expression of a duty to act fairly in relation to legitimate interest of the trade mark owner."
Leave to Appeal
The fact that a minority of the members of the Court of Appeal dissented, i.e. did not agree with the decision of the own name defence, did not justify the grant of permission to appeal. Assos must now seek permission to appeal directly from the Supreme Court if they want to appeal.
The Court of Appeal has also declined a request from Asoss to refer a series of questions to the Court of Justice of the European Union (CJEU). Lord Justice Kitchen stated that neither party had suggested in the course of the appeal hearing that any issue had arisen which might require a reference to the CJEU nor had the Court of Appeal not found it necessary to refer any question in order to reach its decision.in: Case Law, Civil Procedure, News, Passing Off, Trade Marks