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31 August 2015
Following the Court of Appeal decision in the Assos v Asos trademark dispute (for further details please see "'As seen at the Court of Appeal' – split decision on 'own name' defence in Assos v Asos"), there have been two interesting developments which affect it. First, the Supreme Court has refused permission to appeal the Court of Appeal decision; second, the European Commission has set out plans to change the law so that the 'own name' defence will no longer apply to corporations.
The reason given by the Supreme Court for refusing permission to appeal was that "the application does not raise an arguable point of law of general public importance. The relevant principles are not in issue, only their application to the facts of the case".
This means that the majority decision of the Court of Appeal – that Asos could rely on the own name defence to permit it to continue to use ASOS without infringing Assos's Community trademark ASSOS – is not susceptible to further challenge in the English courts.
The own name defence provides that a trademark owner shall not be entitled to prohibit a third party from using its own name in the course of trade in accordance with honest commercial practices.
On June 19 2015 the European Commission published a draft text of a regulation to amend the EU Community Trademark Regulation entitled "Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community Trade Mark". Paragraph 14 of the draft text amends Article 12 of the Community Trademark Regulation so that, once implemented, the own name defence will apply only to natural persons – and thus will not be available to companies such as Asos in future.
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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