The English Court of Appeal has decided that the use of the brand name ‘ASOS’ by ASOS.com Limited created a likelihood of confusion and damaged the distinctive character of the ASSOS registered trade mark. However, the Court held by a majority of two to one that the defendants could rely on the ‘own name’ defence to trade mark infringement.
The case of Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited started in April 2006 when Assos, a manufacturer of specialist cycling clothing beloved by MAMIL (middle aged men in lycra, for the uninitiated) filed an opposition against a CTM Application by ASOS, an online fashion and beauty business. This was based on Assos's earlier application and claimed trade mark infringement. ASOS claimed non-use revocation of Assos’s earlier rights and the ‘own name’ defence.
It was previously decided that the ASSOS CTM should be partially revoked to cover only what it actually used the mark on, such as: specialist clothing for racing cyclists, jackets, t-shirts, polo shirts, track-suit tops, track-suit bottoms, casual shorts and caps. It was found that there was no likelihood of confusion between the use of the ASOS and ASSOS marks and that the use of ASOS did not cause damage to the distinctive character of the ASSOS mark. Consequently, as no infringement was found, no decision on the ‘own name’ defence applied. Both parties appealed.
The ‘own name’ defence is defined as where “a CTM shall not entitle the proprietor (ASSOS) to prohibit a third party (ASOS) from using in the course of trade his own name or address (ASOS) provided use is in accordance with honest practices in industrial or commercial matters [sic]”.
In the judgment handed down by the English Court of Appeal on 1 April 2015, although the court did not find any significant ‘actual confusion’, they agreed that there was a likelihood of confusion and this had led to the weakening of the distinctive character of the ASSOS mark.
As infringement was found, the Lord Justices had to decide whether the ‘own name’ defence applied, and by a majority, they held that it could. On balance, ASOS had fulfilled its duty to act fairly in relation to ASSOS’ legitimate interests and had not been so unfair as to compete with it. However, one Lord Justice disagreed with the application of the defence, stating that the difference between his view and that of the majority was that he considered greater weight should be given to the rights of the trade mark owner and the protection of the interests of the relevant public.
Assos intends to seek leave to appeal to the Supreme Court on the application of the own name defence.
Update: 22 April 2015. The Court refused leave to appeal and leave to refer questions to the CJEU (Court of Justice of the European Union).