Maier & Anor v Asos Plc & Anor [2015] EWCA Civ 220 (01 April 2015)

Maier & Anor v Asos Plc & Anor [2015] EWCA Civ 220 (01 April 2015)

The Court of Appeal upheld the judge's approach to limiting the CTM specification to specialist clothing for cyclists and specific casual wear items (track-suits, t-shirts, polo shirts, shorts, caps, jackets), but broadened the specification to include specialist clothing for cyclists generally, not just racing cyclists. The court found no error in the judge's rejection of infringement under Article 9(1)(b) and 9(1)(c), as there was no likelihood of confusion between the marks, and no evidence of detriment to the distinctive character or repute of the CTM. The challenge to the validity of the UK trade mark for ASOS also failed, as there was no likelihood of confusion or unfair...

Citation
[2015] EWCA Civ 220
Parties
Appellant/claimant: Roger Maier; Appellant/claimant: Assos of Switzerland SA; Respondent/defendant: ASOS plc; Respondent/defendant: ASOS.com Limited
Jurisdiction
England and Wales
Judgment Date
01 April 2015
Procedural Posture
Appeal From High Court (chancery Division, Intellectual Property, Community Trade Mark Court) / Court of Appeal Judgment
Outcome
Appeal dismissed in substance; specification of CTM slightly broadened as to 'specialist clothing for cyclists' instead of 'racing cyclists'; otherwise, High Court's orders affirmed.
Legal Topics
Community Trade Mark, Revocation for Non Use, Likelihood of Confusion, Passing Off, Own Name Defence, Specification Limitation, Invalidity of Trade Mark
Intellectual Property Trade Marks Civil Procedure Community Trade Mark Revocation for Non Use Likelihood of Confusion Passing Off Own Name Defence +2 more

Case Brief

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Parties

Roger Maier

Appellant/claimant

Assos of Switzerland SA

Appellant/claimant

ASOS plc

Respondent/defendant

ASOS.com Limited

Respondent/defendant

Procedural Posture

Appeal From High Court (chancery Division, Intellectual Property, Community Trade Mark Court) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the Community Trade Mark (CTM) for ASSOS should be partially revoked for non-use and to what extent
  2. 2 Whether ASOS's use of its sign infringed the CTM under Article 9(1)(b) and 9(1)(c) of the Regulation
  3. 3 Whether there was a likelihood of confusion between the marks

Ratio Decidendi

The Court of Appeal upheld the judge's approach to limiting the CTM specification to specialist clothing for cyclists and specific casual wear items (track-suits, t-shirts, polo shirts, shorts, caps, jackets), but broadened the specification to include specialist clothing for cyclists generally, not just racing cyclists. The court found no error in the judge's rejection of infringement under Article 9(1)(b) and 9(1)(c), as there was no likelihood of confusion between the marks, and no evidence of detriment to the distinctive character or repute of the CTM. The challenge to the validity of the UK trade mark for ASOS also failed, as there was no likelihood of confusion or unfair...

Court Disposition

Appeal dismissed in substance; specification of CTM slightly broadened as to 'specialist clothing for cyclists' instead of 'racing cyclists'; otherwise, High Court's orders affirmed.

Orders

  • CTM specification limited to: specialist clothing for cyclists; track-suits, t-shirts, polo shirts, shorts, caps, jackets.
  • Partial revocation of CTM outside those goods effective from 17 January 2012.