On yer bike Assos—Asos 'own name' defence succeeds in Court of Appeal

On yer bike Assos—Asos 'own name' defence succeeds in Court of Appeal

With Assos gearing up for an appeal to the Supreme Court, what can be learned from the Court of Appeal’s judgment on the application of the ‘own name’ defence?

The parties

Assos (owned by Roger Maier) manufactures high quality cycling clothing primarily sold in specialist cycling stores in 37 countries worldwide. Assos owns various trade mark registrations including a CTM for ASSOS in classes 3, 12, and 25 registered in September 2006.

Asos is a well-known international online fashion and beauty retailer which originally traded under the name ‘As Seen on Screen’ (replaced by the acronym ‘ASOS’ in 2002). It applied to register ASOS as a CTM in classes 3, 18, 25 and 35 which was successfully opposed by Assos save for some goods in class 18 which proceeded to registration. Asos does however own a UK trade mark covering numerous goods and services in classes 3, 8, 9, 11, 14, 18, 21, 25 and 26.

Background

In December 2011, several years after the parties started using their respective marks, Assos bought a claim against Asos for trade mark infringement and passing off. Asos counterclaimed for revocation of the Assos CTM on the grounds of non-use. The High Court (see Maier and another v Asos plc and another company [2013] EWHC 2831 (Ch), [2013] All ER (D) 185 (Sep)) ruled in favour of Asos:

  1. partial revocation of the ASSOS CTM on the grounds of non-use—its class 25 specification amended from ‘clothing, footwear, headgear’ to ‘specialist clothing for racing cyclists; jackets, t-shirts, polo shirts, track-suit tops, track-suit bottoms, casual shorts, caps’
  2. there was no likelihood of confusion between the use of ‘Asos’ and the CTM and therefore no trade mark infringement under Council Regulation (EC) 207/2009, art 9(1)(b) (the CTM Regulation)
  3. use of the ASOS mark had not caused any damage to the distinctive character of the CTM, therefore there was no infringement under the CTM Regulation, art 9(1)(c)

Asos’ own name defence would become central in the appeal proceedings, but at first instance the judge decided it need not be considered as there was no finding of infringement.

© Annie Crawford

What were the grounds of appeal?

Assos appealed the decision, arguing that the judge erred by rejecting the trade mark infringement claims and was overly-restrictive in her amendment of the CTM specific

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