ASOS mark remains valid - but court limits its specification

In Maier v ASOS plc ([2014] EWHC 123 (Ch), February 4 2014), the High Court has rejected a challenge to the registration of the UK trademark ASOS, brought by a Swiss company that owns the Community trademark (CTM) ASSOS, under which it sells high-end cycling clothing and accessories. The court found no real risk of confusion and held that the ASOS mark would not take undue advantage of, or be detrimental to, the distinctive character and repute of Assos' CTM. Although the judge limited the specification of the ASOS mark to exclude the types of sporting goods sold by Assos, the mark remained valid.                             

Assos is a Swiss company selling specialist cycling kit worldwide. The first claimant, Roger Maier (the chief executive officer of second claimant Assos), owns a CTM for ASSOS, covering various cosmetic and household cleaning preparations in Class 3, vehicles in Class 12 and clothing, footwear and headgear in Class 25 of the Nice Classification. 

ASOS operates a global online fashion and beauty retail store, asos.com, and sells clothing aimed at fashion-conscious twenty-something women and men. On December 7 2012 the UK trademark ASOS was registered for a wide range of goods and services in Classes 3, 8, 9, 11, 14, 18, 21, 25, 26, 35 and 36. 

In the main judgment in this case, Rose J found that use of the name ASOS did not amount to trademark infringement under Articles 9(1)(b) and (c) of the Community Trademark Regulation (207/2009) or passing off. Rose J also held that the ASSOS mark should be partially revoked for non-use under Article 51.

In the present proceedings, Assos brought a claim for partial invalidity of the ASOS mark, pursuant to Section 47(2) of the Trademarks Act 1994 alleging infringement under Section 5(2)(b), on the basis that the ASOS mark was registered for certain items in Classes 3, 25 and 35 that were identical or highly similar to items protected under the earlier ASSOS mark. Assos also claimed that this risk of confusion amounted to passing off under Section 5(4)(a). Further, Assos alleged that the use by ASOS of its UK mark was detrimental to the distinctive character or repute of the earlier CTM, pursuant to Section 5(3).

The key question to be determined was the likelihood of confusion, if any, between the goods produced under the ASOS mark and the goods produced by Assos under its earlier CTM in all the circumstances in which the ASOS mark might be used as registered. With that in mind, the judge considered three potential scenarios. 

In the first scenario, ASOS opened a bricks-and-mortar shop and started selling t-shirts or tracksuits with ASOS written prominently on the front. Rose J opined that such use could be considered fair and notional and would not cause any risk of confusion. Potential purchasers of Assos garments would be motivated by a desire to associate themselves with the mark's reputation as a prestige brand of professional cycling wear, and would ensure that they were buying genuine Assos branded items before committing themselves to the significant financial outlay required to buy such items. ASOS could, on the basis of its UK mark, sell t-shirts which displayed its word mark ASOS more prominently on the front, as opposed to discreetly on an inside label as it currently did. However, in the opinion of Rose J, it was unlikely that the target audience of ASOS would be interested in buying such a garment. Accordingly, Rose J found there was unlikely to be any material confusion between the two marks in this scenario.         

In the second scenario, ASOS decided to go into direct competition with Assos and produce its own range of "hardcore" specialist cycling apparel and skin rash cream designed to alleviate cycling ailments, all bearing the ASOS brand. The list of items covered by the ASOS mark included bodysuits, sports shirts, sports shorts and leggings. In light of previous case law, Rose J decided it was permissible and appropriate to make adjustments to the current specification of the ASOS mark by limiting the goods in Classes 3 and 25 to exclude specialist cycling products.

In the third scenario, ASOS produced a range of ordinary casual clothes with their mark prominently displayed on it and some clear association with cycling. Rose J decided that it was not possible to exclude t-shirts or tracksuits targeted at cyclists or associated with cycling in some way from the ASOS mark specification.  However, such use would start to stray into the territory of passing off and the mere fact that ASOS's UK trademark continued to apply to t-shirts and tracksuits would not preclude Assos from bringing an action in passing off. 

Rose J held that the claims under Sections 5(3) and (4) failed because of the absence of any real risk of confusion. With respect to Section 5(3), Rose J considered that the only way that ASOS would risk diluting Assos' reputation would be if it started selling specialist cycling clothing (which she ruled out by excluding that from the scope of the UK mark) or using its sign in a way which would leave it open to a claim for passing off.  Therefore, Rose J found that the ASOS mark would not take undue advantage of, or be detrimental to, the distinctive character or repute of Assos' CTM.

This judgment highlights the importance of context when it comes to determining the ability of a competent authority to carve out from a wide class of goods a smaller category not to be included in the registration. In this case, the judge appeared concerned that ASOS at some point might seek to take advantage of the similarity of the marks and the breadth of the items listed in their registration to market specialist cycling gear.  Accordingly, she considered it both permissible and appropriate to limit the specification for which the ASOS UK mark was registered to exclude that possibility.

Désirée Fields, McDermott Will & Emery UK LLP, London