In a recent High Court decision, the wheels came flying off for Assos, the Swiss based cycle wear brand. Assos claimed trade mark infringement and passing off by Asos.
Despite the visual and phonetical similarities – ASSOS and ASOS – and that it is not always necessary to show evidence of confusion, Assos was unable to provide significant evidence of confusion amongst the public in circumstances where the marks had coexisted for over 8 years. Nor could Assos show that the ASOS mark was detrimental to the distinctiveness and reputation of the ASSOS mark.
Unfortunately for Assos, that was not the end of the track. Asos successfully counterclaimed for partial revocation of the ASSOS trade mark. As a result the range of goods covered by the ASSOS mark was slashed to cover only specialist clothing for cycling.
Attacking or defending a trade mark infringement claim? Here are some tactical points:
Offensive
- Is the damage to your brand so significant that an award of damages would be inadequate? If so, apply for an injunction.
- Has the defendant responded in time to the claim form? If not, apply for judgment in default.
- Is the defence so poor that the defendant has no real prospect of success? If so, apply for summary judgment.
Defensive
- Is the threat to sue justified? If not, bring a claim for an unjustified threat.
- If the claimant’s mark is descriptive or if you had been using the mark prior to the claimant, the claimant’s mark should not have been registered in the first place. Bring a counterclaim for invalidity.
- Has the claimant been using the mark in relation to the goods for which it is registered? If not, counterclaim for revocation.
