Assos, a specialist cycling wear brand, sued Asos, the global online fashion retail company, for infringement of its Community Trade Mark (CTM), ASSOS, and passing off. However, the wheels came flying off as the High Court dismissed the claim, and partially upheld a counterclaim by Asos for partial revocation of the ASSOS CTM. Asos had also counterclaimed for partial invalidity, but this was not successful.
Trade mark infringement and passing off
Assos claimed that Asos’s mark, ASOS, would likely result in confusion amongst the public; consumers would associate the ASOS mark with Assos’s business. Although, on the face of it, ASOS and ASSOS are visually and phonetically similar, Assos’s evidence (which included anecdotal and survey evidence, a price draw and website analytics) was unable to provide any persuasive instances of confusion.
Assos also claimed that its CTM enjoyed a reputation and that the use of ASOS was detrimental to the distinctive character and reputation of the ASSOS CTM. Assos was able to demonstrate that there was a link between the marks in the minds of the average purchaser of Asos’s products, however there was no evidence of dilution of the ASSOS CTM. The ubiquitous presence of ASOS in newspapers and magazines and on the internet was not “swamping” Assos’s mark as much of such media was unlikely to be read by Assos’s customers.
The passing off claim also failed as Assos was unable to demonstrate that it had acquired sufficient goodwill in relation to the relevant goods and there was no evidence of misrepresentation.
Unfortunately for Assos, that was not the end of the track. Not only was Assos unsuccessful with its claim; it also had to contend with its CTM being partially revoked for non-use. When considering a revocation claim, a Court must look at the actual use made of a mark by the trade mark owner and determine what specification would be a fair one. The table below sets out the extent to which the goods specified by the CTM were amended by the Court:
Original goods specified
- Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices
- Vehicles; apparatus for locomotion by land, air or water
- Clothing, footwear, headgear
Amended goods specified
- Preparations for the treatment or prevention of ailments associated with cycling; cleaning products for specialist cycling clothing
- Bicycles and their parts and fittings
- Specialist clothing for racing cyclists and casual wear including track-suits, t-shirts, polo shirts, caps and jackets
On initial inspection, it appears that the High Court has restricted the goods covered by the ASSOS CTM to cycling related goods. However, some may argue that “casual wear including track-suits, t-shirts, polo shirts, caps and jackets” is not restricted to cycling and is too vague. The Court commented that simply limiting the clothing to cycling related clothing would be too narrow. Assos did market clothing which was not necessarily linked to cycling; clothing which could be worn after a number of other sporting activities or indeed on occasions where casual clothing was appropriate.
Assos had publicity material in which models wore its clothing in an airport lounge; far removed from the field of cycling.
Regardless of this, the initial specification “clothing, footwear, headgear” was too wide as there were a number of categories of clothing for which Assos had not used its CTM, including dresses, skirts, knitwear, blouses, jeans or baby clothes.
There was some respite for Assos. Asos’s counterclaim for partial invalidity was dismissed as it was unable to show that, as at June 2005, it had sufficient goodwill as a supplier of goods bearing it’s own brand name; it was principally an online clothing store selling other brands of clothing and celebrity look-alike styles. As such, Asos would not have been able to prevent the ASSOS mark from proceeding to registration.
Points to consider
This case highlights the tactics that can be adopted when pursuing or defending a trade mark infringement claim. Below are some tactics to consider if you are in such a situation, which will assist you in puncturing the opposing parties case.
- 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.
- 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.