ASOS v ASSOS: proving peaceful co-existence of marks in EU is a 'chimera'

Asos Plc v Office for Harmonisation in the Internal Market (OHIM) (Case T-647/11) is an instalment in the long legal saga between Asos (the UK online fashion and beauty products retailer) and Assos of Switzerland AS (the Swiss company specialising in clothing and equipment for cycling) and a useful reminder of how difficult (if not impossible) it is to produce evidence of peaceful co-existence of two marks in the European Union. 

Asos applied for the registration of the Community trademark (CTM) ASOS in Classes 3, 18, 25 and 35 of the Nice Classification. Roger Maier (Assos’ CEO) opposed Asos’ application, relying on the earlier CTM ASSOS in Classes 3, 12 and 25.

The Opposition Division of OHIM upheld the opposition in part, finding a likelihood of confusion in relation to all goods and services in Classes 3, 25 and 35, and several goods in Class 18. 

Asos appealed. The Board of Appeal of OHIM confirmed that all of the goods in Classes 3, 25 and 35 covered by Asos’ application were identical to those protected by Mr Maier’s CTM and that there was a likelihood of confusion. Conversely, the Board of Appeal held that “bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses” in Class 18 were not similar to “clothing, footwear, headgear” in Class 25 protected by Mr Maier’s CTM and, on that basis, annulled the finding of a likelihood of confusion by the Opposition Division in respect of those goods.    

Asos appealed to the General Court, asking for an annulment of the Board of Appeal’s decision. OHIM asked the court to dismiss the appeal. Mr Maier asked the court to dismiss Asos’ appeal and to reverse the finding of no likelihood of confusion in relation to the Class 18 goods above. The court dismissed all applications for annulment and disappointed both Asos and Mr Maier. 

Asos claimed to have produced evidence of peaceful co-existence between the two marks in 18 member states of the European Union and argued that the Board of Appeal had erred in disregarding such evidence in its assessment.

It is known from the court’s previous decisions (Scandic Distilleries SA v OHIM (Case T-460/11), Paragraph 60, and Nokia Oyj v OHIM (Case T-460/07), Paragraph 68), that:

“it cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the applicant for the Community trademark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks on which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the conflicting marks are identical”.  

Asos’ evidence consisted of two declarations from its in-house counsel. The court rejected the evidence because it:

• emanated from Asos itself and was not supported by independent sources;
• related only to the use of the mark applied for and not the manner in which the public was exposed to the marks on the market; and
• was in respect of only 18 countries and not the whole of the European Union, and co-existence in only part of the European Union does not exclude a likelihood of confusion in the European Union as a whole.

The court’s approach confirms that a party’s ability to produce evidence of peaceful co-existence is closer to a chimera than a real possibility. This is clear from the half-hearted (to say the least) recognition that “it cannot be entirely excluded” that evidence of peaceful co-existence could reduce the likelihood of confusion.

It is unclear why the impact of peaceful co-existence would be relevant only where the marks in question are identical. If it is a factor relevant to the assessment of a likelihood of confusion (which arises also in relation to similar marks), should it not be taken into account for similar marks as well?

The court criticised the fact that Asos’ evidence did not include the manner in which the public was exposed to the marks on the market; in a previous decision, the court noted that long-term and undisputed co-existence of potentially conflicting marks in several countries is not sufficient either (The Cartoon Network Inc v OHIM (Case T-285/12, Paragraphs 55 to 57).

If there was evidence of actual confusion, one would expect the opponent to submit it to OHIM. How can the applicant submit evidence of the fact that the public exposed to the marks on the market was not confused? Is it possible to gather evidence to satisfy OHIM of the negative?

In probative terms, what sort of exercise should be conducted by an applicant to produce statistically relevant evidence that there is absence of confusion? The only method that comes to mind is a survey, but it is understood from the court that evidence should be produced in respect of each member state of the European Union.

Further, what if both parties do not operate in all member states? Can the member states in which only one or neither of them operates be excluded from the count? Presumably it would be inconsistent to do so, as evidence of peaceful co-existence “in part of the territory […] does not have the effect of excluding a likelihood of confusion in the European Union as a whole”. 

It seems that the court may have entirely excluded that peaceful co-existence of two marks in the whole territory of the European Union may ever be shown. Nevertheless, no doubt applicants will continue to pursue this apparently chimeric goal.

Cam Gatta, Redd Solicitors LLP, London