Maier & Anor v Asos Plc & Anor

Maier & Anor v Asos Plc & Anor

The Court held that the CTM should be partially revoked to cover 'specialist clothing for cyclists and casual wear' but not the entire original specification. There was a likelihood of confusion under Articles 9(1)(b) and 9(1)(c) if the CTM were used for casual wear in ordinary retail channels, but ASOS was entitled to the own name defence under Article 12(a) as its conduct was not unfair in the circumstances. The UK trade mark was declared invalid for goods and services overlapping with the CTM. The cross-appeal on invalidity of the CTM failed.

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
Civil Appeal / Appeal From High Court (chancery Division) to Court of Appeal
Outcome
Appeal and cross-appeal allowed in part and dismissed in part.
Legal Topics
Community Trade Mark, Trademark Infringement, Passing Off, Revocation for Non Use, Own Name Defence, Likelihood of Confusion, Trademark Validity
Intellectual Property Trademark Law Community Trade Mark Trademark Infringement Passing Off Revocation for Non Use Own Name Defence Likelihood of Confusion +1 more

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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

Civil Appeal / Appeal From High Court (chancery Division) to Court of Appeal

Legal Issues

  1. 1 Scope of Community Trade Mark (CTM) protection and partial revocation for non-use
  2. 2 Whether ASOS's use of its sign constitutes infringement under Articles 9(1)(b) and 9(1)(c) of the Regulation
  3. 3 Availability of the own name defence under Article 12(a)

Ratio Decidendi

The Court held that the CTM should be partially revoked to cover 'specialist clothing for cyclists and casual wear' but not the entire original specification. There was a likelihood of confusion under Articles 9(1)(b) and 9(1)(c) if the CTM were used for casual wear in ordinary retail channels, but ASOS was entitled to the own name defence under Article 12(a) as its conduct was not unfair in the circumstances. The UK trade mark was declared invalid for goods and services overlapping with the CTM. The cross-appeal on invalidity of the CTM failed.

Court Disposition

Appeal and cross-appeal allowed in part and dismissed in part.

Orders

  • CTM specification cut down to 'specialist clothing for cyclists and casual wear' (with 'racing' deleted from 'specialist clothing for racing cyclists')
  • ASOS's use not infringing due to own name defence under Article 12(a)