Maier & Anor v Asos Plc & Anor [2014] EWHC 123 (Ch) (04 February 2014)

Maier & Anor v Asos Plc & Anor [2014] EWHC 123 (Ch) (04 February 2014)

There is no real risk of confusion between ASOS' UK trade mark and Assos' CTM, even considering notional fair use. The ASOS UK mark does not take unfair advantage of or dilute Assos' reputation, and is not liable to be prevented by passing off. The challenge to the ASOS UK mark fails, except for permissible carve-outs excluding preparations for the treatment or prevention of cycling ailments and specialist clothing for racing cyclists.

Citation
[2014] EWHC 123 (Ch)
Parties
Claimant: Roger Maier; Claimant: Assos of Switzerland SA; Defendant: ASOS PLC; Defendant: ASOS.COM Limited
Jurisdiction
England and Wales
Judgment Date
04 February 2014
Procedural Posture
Trade Mark Invalidity Claim / Post Trial Judgment on Partial Invalidity of UK Trade Mark
Outcome
Claim for partial invalidity of ASOS' UK trade mark dismissed, subject to specification carve-outs.
Legal Topics
Partial Invalidity, Likelihood of Confusion, Passing Off, Reputation and Unfair Advantage, Specification Carve Out
Intellectual Property Trade Marks Partial Invalidity Likelihood of Confusion Passing Off Reputation and Unfair Advantage Specification Carve Out

Case Brief

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Parties

Roger Maier

Claimant

Assos of Switzerland SA

Claimant

ASOS PLC

Defendant

ASOS.COM Limited

Defendant

Procedural Posture

Trade Mark Invalidity Claim / Post Trial Judgment on Partial Invalidity of UK Trade Mark

Legal Issues

  1. 1 Whether ASOS' UK trade mark registration should be partially invalidated under sections 5(2)(b), 5(3), and 5(4)(a) of the Trade Marks Act 1994 due to similarity and likelihood of confusion with Assos' earlier CTM
  2. 2 Whether the registration takes unfair advantage of or is detrimental to the distinctive character or repute of Assos' mark
  3. 3 Whether the registration is liable to be prevented by passing off

Ratio Decidendi

There is no real risk of confusion between ASOS' UK trade mark and Assos' CTM, even considering notional fair use. The ASOS UK mark does not take unfair advantage of or dilute Assos' reputation, and is not liable to be prevented by passing off. The challenge to the ASOS UK mark fails, except for permissible carve-outs excluding preparations for the treatment or prevention of cycling ailments and specialist clothing for racing cyclists.

Court Disposition

Claim for partial invalidity of ASOS' UK trade mark dismissed, subject to specification carve-outs.

Orders

  • ASOS' UK trade mark specification limited to exclude preparations for the treatment or prevention of ailments associated with cycling and cleaning products for specialist cycling clothes in Class 3, and specialist clothing for racing cyclists in Class 25.
  • No further invalidity or restriction ordered.