Apr 7, 2015

Assos told to get on its bike by the Court of Appeal

The Court of Appeal recently handed down a decision in the matter between Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited at [2015] EWCA Civ 220 in which it held that the use of the word ASOS by the Defendants was likely to cause confusion and to damage the distinctive character of the Claimants' registered trademark.

ASSOS, the Claimant in this action, are the proprietors of a registered Community Trade Mark for the mark ASSOS in relation to clothing, footwear and headgear ("CTM").  The Defendants, ASOS, are the clothing retailers.

The First Instance Decision

The Claimant brought a trade mark infringement claim against the Defendant for use of the word ASOS on their clothing retail site www.asos.com as well as on their own brand of clothing.  The Defendants denied the allegations of trade mark infringement, claiming, amongst other defences the 'own name' defence.  The Defendants also sought a counter claim to revoke the CTM on the basis of non-use and invalid by virtue of the Defendants' prior rights.

In the first Instance, it was held that:

The CTM be partially revoked to cover the following:

Class 3 - 'Preparations for the treatment or prevention of ailments associated with cycling; cleaning products for specialist cycling clothes'
Class 12  'Bicycles and parts and fittings thereof'
Class 25 'Specialist clothing for racing cyclists and casual wear including track-suits, t-shirts, polo shirts, caps and jackets
The invalidity counter claim by ASOS based on earlier rights is dismissed
The claim by Assos for infringement of its mark under Article 9(1)(b) and (c) CTMR is dismissed
The claim by Assos for passing off is dismissed.

Importantly, the claim for infringement of its mark was dismissed in the first instance on the form of t-shirts basis that Assos has a reputation as a maker of cycling clothing worn whilst on a bike and not for casual clothing, and whilst Assos does make some causal clothing to be worn off the bike, they do not have a reputation for making causal clothing.  Justice Rose reasoned that because racing cyclists are not likely to wear knitted wear, dresses or shoes to ride, the goods sold by Asos are neither identical nor similar to the Assos goods.

In relation to the likelihood of confusion between the two marks, Justice Rose reasoned in light of the absence of any actual confusion in the past, the expansion of Assos to make fair use of their range in line with the specifications of their registered mark is not likely to lead to more confusion than that which currently exists.  There, it was held that:

"the relevant average consumer is not likely to be confused into thinking that ASOS products are linked with the Assos mark"

The Appeal

On appeal, the Court of Appeal unanimously overturned the first instance decision on likelihood of confusion and damage to distinctive character on the basis that confusion had only been considered in relation to the Claimants' actual use of the mark and not the use of the mark across the entirety of the mark's specification.

Kitchen LJ reasoned that the likelihood of confusion must be appreciated globally, through the eyes of the consumer who has imperfect picture of the mark in his mind.  In such consideration, the likelihood of confusion does exist in the mind of the public in relation to the sale by Asos of casual clothing.

The Lord Justices were, however, split with regard to the question of the extent to which the trade mark specification should be revoked and the application of the Defendants' 'own name' defence.

The majority held that the goods covered by the mark should be as that found by the judge in the first instance, with the deletion of the word, 'racing', from the specification.

With regard to the 'own name' defence, it was held that relevant factors to consider to that defence were the facts that the name Asos had been adopted innocently, as an acronym of, "as seen on screen" and the Defendants had performed a search via on the word Asos before adopting the word although they had failed to perform a trademark search.  Further relevant consideration in light of the Defendant's defence of 'own name' was that there was no significant evidence of actual confusion and the Defendants, having sold cycling apparel after becoming aware of the CTM, had stopped prior to Trial therefore indicating Asos' willingness to move away from Assos' business model.

The above facts were held to be evidence of the Defendants' fulfilling their duty to act fairly with regard to their business interests and not competing unfairly with the Claimants' own business.  Consequently, the 'own name' defence was upheld.

Dissenting, Sales LJ was of the opinion that the 'own name' defence should not be available to the Defendant on the basis that the onus was placed on the Defendants to perform a thorough and reasonable check as to whether another party was using ASOS or something confusingly similar.

With such a vocal dissenting opinion, it is expected that an appeal to the Supreme Court will follow and that this matter has not been laid to rest.

in: Case Law, Companies, News, Passing Off, Trade Marks

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