In thiscase the dispute was over whether Asos (defendant) had infringed Assos’s communitytrade mark (CMT) in the word mark “Assos” for cycle clothing. The High Courtheld that defendant had not infringed the word mark “Assos”. Furthermore, the HighCourt upheld the defendant’s trade mark as a valid mark, even though thedefendant had only registered their mark in 2009 for a wide range of goods andservices including articles of clothing and class 25 where as the claimant hadregistered their mark back in 2005. The High Court’s reasoning and practicalapproach was that defendant ‘s use of the mark did not constitute infringement becausethe claimant’s word mark was only used on specified goods and not all goodswhich they had trade mark in.
In particular, there was no genuine use of themark across the whole range of goods for which it was registered. The Court of Appealconsidered two questions; was there actual confusion and was there damage doneto the distinctiveness of the mark. The Court of Appeal held that defendant hadinfringed the claimant’s mark because the marks were found to be similar; visuallyand sounded similar when spoken.
In addition, there was similarity between thegoods sold by the defendant and those goods covered by the claimant’s CTM. The Court of Appeals’reasoning was that the judge at first instance errored in its approach to findingwhether or not there was a likelihood of confusion existed in regards of thegoods for which claimant’s mark had actually been used. The right method suggestedwas to consider in light of the speculative and reasonable practice of the markin respect of the full breadth of its specification. Although the judges foundthe defendant had infringed the claimant’s CTM, they could rely on the “own name”defence. This defence was applicable because in the Court’s view the defendant’scompany name “ASOS” was adopted honestly and was derived from the Defendant’sformer name “AS Seen On Screen”. Therefore, the defendant had not used the nameto take advantage of the claimant’s goodwill. Also, the Court of Appeal held thatthe defendant had not intended to steal customers from them and there was noevidence of actual confusion. The practical approach on suing a business for infringementis that, if it can be proved that a company’s name is likely to cause confusionamongst customers and that level of confusion is high enough to satisfy that theregistered mark’s reputation has been tarnished it is likely that use of themark as a company name will be infringing the earlier registered trade mark.
Furthermore,although the Court of Appeal ruled in the defendant’s favour by accepting thedefence, it is a question of what the market can tolerate when there are twovery similar trade mark competing in the same market, however whether thetrademarks can co-exist together in the same market is ultimately down to relevantTribunals, and what they perceive the market can tolerate. In the above case,the defence was accepted due to thefact the name did not actually cause confusionbecause the defendant’s trade mark did in fact come from the business ownersname.