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11 May 2015
The Court of Appeal has held that use of the 'ASOS' brand by well-known online clothing retailer Asos created a likelihood of confusion with and damaged the distinctive character of the earlier ASSOS Community trademarks owned by Assos, the specialist cycle clothing retailer, but that Asos could nonetheless rely on the 'own name' defence to avoid trademark infringement.
Assos had registered a Community trademark in 2005 for ASSOS in respect of, among others, clothing, footwear and headgear. Asos, which had previously been known as 'As Seen on Screen', had been using the acronym ASOS since the early to mid-2000s.
Assos brought trademark infringement proceedings against Asos in respect of its use of ASOS on its website www.asos.com and its own-label clothing. Asos denied infringement, relying in particular on the own name defence, and counterclaimed for both revocation of the Community trademark on the basis of non-use and invalidity of the Community trademark on the basis of its own prior rights.
The High Court ruled as follows:
The Court of Appeal unanimously overturned two elements of the High Court decision by finding as follows:
However, the Court of Appeal was split over the application of the own name defence and the extent to which the Community trademark specification should be revoked.
Own name defence
In reaching the decision that Asos could rely on the own name defence, the following facts were of particular relevance:
The majority decided on balance that Asos had "fulfilled their duty to act fairly in relation to Asos' legitimate interests and had not conducted their business so as unfairly to compete with Assos". As a result, the own name defence applied.
Lord Justice Sales (dissenting) preferred to place more emphasis on the rights of the Community trademark owner and the public in not being confused as set out in the recitals to the EU Community Trademark Regulation and considered that the own name defence was not available to Asos.
While the Court of Appeal upheld the High Court judge's revised specification for the Community trademark with the proviso that the word 'racing' be removed, Sales (dissenting) held that the category 'casual clothing' was appropriate (as opposed to listing out every item), as it was the smallest category which encompassed the selection of items on which use had been proved.
The Court of Appeal decision is particularly interesting because of the application of the own name defence and the dissenting judgment of Sales.
Notably, the Court of Appeal majority placed significant emphasis on the fact that there had been no actual confusion. Trademark owners should bear in mind that while actual confusion is not a prerequisite for infringement, its absence may be crucial, particularly when both parties have coexisted for a significant period of time.
In contrast, Sales preferred a balancing of interests between the trademark owner and the potential infringer, finding that the trademark rights should be given primacy, resulting in a much narrower own name defence.
A further appeal to the Supreme Court may well be pursued by Assos, so the scope of the own name defence may yet be tested again and contain another twist.
For further information on this topic please contact David Cran or Adam Cusworth at RPC by telephone (+44 20 3060 6000) or email (firstname.lastname@example.org or email@example.com). The RPC website can be accessed at www.rpc.co.uk.
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