In this case the dispute
was over whether ASOS had infringed ASSOS’s community trade mark in the word mark
“ASSOS” for goods such as footwear, clothing and head gear in class 25. The
High court held that ASOS had not infringed the word mark ASSOS. Furthermore,
the High Court upheld ASOS’s trade mark as a valid mark, even though ASOS had
only registered their mark in 2009 for a wide range of goods and services including
articles of clothing and class 25 where as ASSOS had registered their mark back
in 2005. The High Court’s reasoning and practical approach was that ASOS ‘s use
of the mark did not constitute infringement because ASSOS word mark was only
used on specified goods and not all goods which they had trade mark in. In
particular, there was no genuine use of the mark across the whole range of
goods for which it was registered. The Court of Appeal considered two questions;
was there actual confusion and was there damage done to the distinctiveness of the
mark. The Court of Appeal held that ASOS had infringed ASSOS’s mark because the
marks were found to be similar and that they were visually and sounded the similar
when spoken. In addition, there was similarity between the goods sold by ASOS
and those goods covered by the ASSOS’s CTM. The Court of Appeals’ reasoning was that the
judge at first instance errored in its approach to finding whether or not there
was a likelihood of confusion existed in regards of the goods for which ASSOS
mark had actually been used. The right method suggested was to consider in
light of the speculative and reasonable practice of the mark in respect of the
full breadth of its specification. Although the judges found ASOS had infringed
the ASSOS’s CTM, ASOS could rely on the “own name” defence. This defence was
applicable because in the Court’s view ASOS’s name was adopted honestly and was
derived from the Defendant’s former name “AS Seen On Screen”. It was also found
that ASOS had not deliberately used the name to compete with ASSOS to steal customers
from them and there was no evidence of actual confusion.


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