Plaintiff loses infringement and passing-off claims - and has CTM partially revoked

In Maier v ASOS plc ([2013] EWHC 2831 (Ch), September 19 2013), the High Court has dismissed claims in respect of trademark infringement and passing off, but upheld a counterclaim for partial revocation.

Assos of Switzerland SA, the company that commercialised the first pair of lycra cycling shorts, was set up in the 1970s and continues to produce and sell high-tech cycling gear in a number of countries. Roger Maier is the chief executive officer of Assos and owner of the Community trademark (CTM) for the word mark ASSOS (CTM No 4580767). The ASSOS CTM covers various cosmetic and cleaning products in Class 3, vehicles in Class 12, and clothing, footwear and headgear in Class 25 of the Nice Classification, with a priority date of June 14 2005.

ASOS plc and Asos.com Limited (together ASOS) operate a global online retail store, selling women's fashion items and men's clothing. ASOS has included the word 'ASOS' in its logo from at least 2002. In 2005, shortly after Assos’ CTM application, ASOS applied to register a CTM for the word 'ASOS'. However, Assos was permitted to oppose the ASOS CTM and there is currently an appeal pending before the General Court.

In the current proceedings, Assos alleged:

1. trademark infringement on the basis that the fashion items offered for sale under the ASOS mark caused confusion between the ASOS and Assos brands (Article 9(1)(b) of the Community Trademark Regulation (207/2009);
2. that ASOS’ use of the ASOS mark was detrimental to the distinctive character or reputation of the ASSOS mark (Article 9(1)(c) of the regulation); and
3. that ASOS was passing off its goods/services in the United Kingdom as being associated or connected with that of Assos.

ASOS filed a counterclaim that the ASSOS CTM should be partially revoked for non-use (Article 51 of the regulation), and that it was otherwise partially invalid because ASOS would have been able to oppose the ASSOS mark at the time it was applied for (Article 8(4) of the regulation).

With regard to the infringement claim, the court accepted that the respective marks were highly similar aurally and visually, noting that both companies use lower-case letters. However, the court considered the respective parties’ goods to be of limited similarity. Given the specialised cycling-related reputation of Assos and the fact that most Assos products have a hefty price tag, the court held that its customers would likely have investigated and understood the brand before purchasing. Further, while the court accepted that the marks used by the parties were similar enough for one to be confused for the other, it noted that this was not evidence of confusion with regard to the origin of the goods/services in question.

The court remained unswayed by survey evidence submitted by Assos. The survey was conducted at the London Bike Show at Earls Court, which the court pointed out was attended by people who are part of Assos' key audience, but not necessarily part of ASOS', and no online context was included in the questions asked. Even in these circumstances, only 71 out of 713 interviewees (roughly 10%) were under the impression that a plain t-shirt with an ASOS label was an Assos product. Consequently, the court determined that the survey evidence did not support a likelihood of confusion.

On the evidence, therefore, the relevant average consumer was not likely to be confused into thinking that products sold by ASOS were linked with the ASSOS CTM.

In relation to the allegation of infringement by dilution, the court commented that, although the marks were similar, it was questionable whether the ASOS mark created a link in the mind of consumers, so as to create a conceptual connection with Assos. The court held that there was no evidence that the presence of ASOS in the market has actually diluted Assos’ association with its mark or that it weakened the reputation of Assos’ brand as being for the cycling elite. For these reasons, the claim for infringement under Article 9(1)(c) also failed.

With regard to the passing off claim, the court noted that Assos' goodwill was limited to cycling paraphernalia and casual clothes specifically bought by people wishing to associate themselves with the cycling brand. The court also accepted that there was nothing in the manner in which ASOS used its mark that signified any connection with Assos and that there was no convincing evidence of misrepresentation. Further, the court could not identify anything that ASOS had done to damage Assos' goodwill as a premium cycling apparel producer. Accordingly, the passing-off claim failed.

With regard to the counterclaim for partial revocation, the court found that Assos had made genuine use of the ASSOS CTM in relation to some goods covered by the registration, but not others. For instance, it was agreed that Assos had made use of the mark for specialist cyclist clothing. There was also some evidence that Assos had made modest inroads into the more general leisurewear market. The court noted that the relevant question in this case was: “having regard to the use that has actually been made by Assos of its mark, would the average consumer consider that ‘clothing, footwear and headgear’ was a fair description of that use or would he or she describe the use as limited to some narrower category and, if so, what category?”. After reviewing sales evidence, the court held that any description tying the goods only to cycling would be too restrictive, as the goods could be worn in relation to other sports or simply as casual clothing. On the other hand, there were various categories of ordinary clothing to which Assos’ CTM had never been attached. Ultimately, the court determined that Assos' CTM registration under Class 25 should be limited to “specialist clothing for racing cyclists and casual wear including track-suits, t-shirts, polo shirts, caps and jackets”.

Using the same logic, the court revised the scope of the ASSOS CTM in Class 3 from “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” to “preparations for the treatment or prevention of ailments associated with cycling; cleaning products for specialist cycling clothes”, and in Class 12 from “vehicles; apparatus for locomotion by land, air or water” to “bicycles and parts and fittings thereof”.

Consequently, the court held that the Assos’ CTM should be revoked for non-use apart from items within the revised specifications.

ASOS’ invalidity claim was based on its use of the ASOS mark prior to Assos’ application for registration of its CTM. However, the court held that, at the priority date of Assos’ CTM, ASOS did not have any goodwill in respect of clothes sold under the ASOS brand. The only goodwill it had at that time was as an online clothing retailer selling other brands. As such, ASOS would not have been able to succeed in a passing-off claim against Assos at the priority date and, therefore, would not have been able to prevent Assos from registering its CTM. Given the court’s ruling in respect of partial revocation described above, the court's comments on invalidity were obiter.

This decision is a good demonstration of the process to follow in establishing a revised description of goods in the context of partial revocation under Article 51 of the regulation and acts as a useful summary of all the relevant authorities. This case also serves as a reminder to proprietors to ensure use of their marks in relation to all of the goods and services specified or to amend their registration, so as to retain control of their specification rather than handing it over to the courts on the back of a claim for non-use. The case also highlights how a party’s own survey evidence can serve to work against it, rather than for it. In this case, entering into a coexistence agreement specifying that ASOS would not trade in high-end cycling gear would have preserved Assos’ CTM registration and would likely have saved the parties both time and money.

Keo Shaw, McDermott Will & Emery UK LLP, London