The Court of Appeal has delivered its decision on Roger Maier and Assos of Switzerland SA v. ASOS plc and ASOS.com Limited, the latest in a long-running series of trade mark disputes between Assos, the manufacturer of high-quality cycling clothing and sportswear, and Asos, the online fashion retailer. The case considers the extent to which an infringer is able to rely on the “own name” defence to trade mark infringement under Article 12 of the Community Trade Mark Regulation (CTMR).
The decision demonstrates the difficulties faced by brand owners and practitioners alike in predicting the outcome of trade mark disputes, with much of the first instance decision being overturned and the Lord Justices of the Court of Appeal unable to reach a unanimous verdict. By a majority of 2-1, the Lord Justices held that, whilst Asos’s use of the mark ASOS had infringed Assos’s earlier rights in the mark ASSOS, Asos was entitled to rely on the “own name” defence to trade mark infringement and was therefore not liable for trade mark infringement. In a lengthy dissenting judgement, Sales LJ disagreed with the application of the own name defence, stating that greater weight should be given to the rights of the trade mark owner and the protection of the interests of the relevant public.
Assos is the owner of various registered trade marks, including an International Registration dating from 2001 for the stylised word mark ASSOS, covering bicycles and parts in Class 12 and clothing for racing cyclists in Class 25. In 2006, Assos registered a European Community Trade Mark (CTM) for the word mark ASSOS in respect of, among other things, clothing, footwear and headgear. In 2011, they brought trade mark infringement and passing off proceedings in respect of Asos’s use of the mark ASOS in relation to their online fashion retail business and their ASOS own brand clothing. Assos also contended that a UK trade mark registration of the mark ASOS, registered by Asos in 2012, was invalid.
Asos contended that there was no infringement and relied on a number of defences, including the “own name” defence (Asos being its corporate name), which entitles a party to use in the course of trade his own name or address, provided such use is “in accordance with honest practices in industrial or commercial matters”. Asos was initially founded in 1999 under the name “As Seen On Screen”, but adopted the acronym ASOS as its business name and on its website in 2002. Asos also counterclaimed that the CTM relied upon by Assos was liable to be revoked for non-use and that it was invalid on the basis of Asos’s earlier unregistered rights in the mark ASOS.
In her judgement delivered in 2013, Rose J held at first instance that:
Both parties appealed the decision.
The Court’s judgement was unanimous on certain issues, but notably divided on others. The Court unanimously overturned Rose J’s decision on the likelihood of confusion and damage to distinctive character, holding that the Judge had mistakenly focussed solely on the actual use made of the ASSOS mark rather than a notional and fair use of the mark across the entirety of the specification (as restricted). In particular, and unlike the Judge, the Court was not swayed by the fact that there was little “actual confusion” between the marks, noting that the parties’ channels of trade had, to date, been different. The Lord Justices therefore held unanimously that the use of ASOS had infringed the earlier ASSOS CTM. The Court was divided, however, on the extent to which Assos’s CTM should be revoked and on the application of the own name defence.
By majority, the Court held that the specification of Assos’s CTM should be limited as found by the Judge, save that the word “racing” should be deleted as Assos’s cycling clothing was aimed at amateur as well as professional cyclists. The Lord Justices agreed with the Judge that “jackets, t-shirts, polo shirts, track-suit tops, track-suit bottoms, casual shorts, caps” was an appropriate limitation as far as Assos’s range of casual clothing was concerned, stating that the term “casual clothing” as proposed by Assos was too broad a category to be supported by the use shown.
Sales LJ, dissenting, considered this limitation too narrow and unduly restrictive on Assos’s legitimate interest in having CTM protection which allows for the reasonable future development of its established pattern of business. Sales LJ therefore agreed with Assos that “casual clothing” was a more appropriate formulation, this being the only sensible dividing line of any clarity which was non-arbitrary and avoided capricious and unjustified limitations, in his view.
Having unanimously upheld Assos’s claims for infringement, the Court held by majority that Asos could rely on the own name defence. The crucial question was whether Asos’s use of ASOS had been “in accordance with honest practices in industrial or commercial matters”. Kitchin LJ and Underhill LJ considered the following circumstances to be relevant in reaching the conclusion that Asos had fulfilled its duty to act fairly:
In his dissenting judgement, Sales LJ held that the own name defence should not apply, considering that more weight should be given to the rights of the trade mark proprietor and the interests of the public in not being confused. In finding that Asos had not fulfilled its duty to act in accordance with honest practices, he considered the following facts to be relevant:
Sales LJ considered all of the above to constitute failings on the part of Asos to comply with “honest practices”.
The final part of the Court’s judgement focused on Assos’s challenge to the validity of Asos’s UK registration, based on the earlier ASSOS CTM. Assos was successful in invalidating the UK registration in respect of, among other things, all of the goods in Class 25 (essentially clothing and headgear) and all of the services in Class 35 (essentially online, mail order and in-store retailing) insofar as they related to clothing.
The Court’s majority decision on the availability of the own name defence is likely to have come as a surprise to many, and is of particular interest in view of the fact that the European Commission’s proposed reforms to EU trade mark law, originally published in draft in 2013, include clarification that provisions allowing third parties to use their own name or address without risk of infringement will apply only to personal names and addresses and not to corporate ones.
The case also illustrates several other issues facing brand owners, practitioners and the courts, including the balance to be struck between affording adequate protection to brand owners and the need to avoid overly wide specifications which do not fairly reflect the use made of a mark and which may unduly restrict competition. The case also highlights the importance and value of having full trade mark availability searches conducted prior to adopting a new brand.
For now, the Court of Appeal has denied Assos’s request for leave to appeal, as well as their request to refer questions to the Court of Justice of the European Union. Assos will therefore need to seek permission to appeal directly from the Supreme Court if they wish to appeal the decision.
23 June 2015