In this case the disputewas 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. TheHigh 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 hadonly registered their mark in 2009 for a wide range of goods and services includingarticles of clothing and class 25 where as ASSOS had registered their mark backin 2005. The High Court’s reasoning and practical approach was that ASOS ‘s useof the mark did not constitute infringement because ASSOS word mark was onlyused on specified goods and not all goods which they had trade mark in.
Inparticular, there was no genuine use of the mark across the whole range ofgoods 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 themark. The Court of Appeal held that ASOS had infringed ASSOS’s mark because themarks were found to be similar and that they were visually and sounded the similarwhen spoken. In addition, there was similarity between the goods sold by ASOSand those goods covered by the ASSOS’s CTM. The Court of Appeals’ reasoning was that thejudge at first instance errored in its approach to finding whether or not therewas a likelihood of confusion existed in regards of the goods for which ASSOSmark had actually been used. The right method suggested was to consider inlight of the speculative and reasonable practice of the mark in respect of thefull breadth of its specification.
Although the judges found ASOS had infringedthe ASSOS’s CTM, ASOS could rely on the “own name” defence. This defence wasapplicable because in the Court’s view ASOS’s name was adopted honestly and wasderived from the Defendant’s former name “AS Seen On Screen”. It was also foundthat ASOS had not deliberately used the name to compete with ASSOS to steal customersfrom them and there was no evidence of actual confusion.