Maier & Anor v Asos Plc & Anor

Maier & Anor v Asos Plc & Anor

There is no real risk of confusion between the ASOS UK mark and the Assos CTM, even considering notional fair use. The ASOS UK mark does not take unfair advantage of or detrimentally affect Assos’ reputation, and is not liable to be prevented by passing off. The challenge to the ASOS UK mark fails.

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 Dispute / Further Judgment Following Main Trial and Final Order
Outcome
Claim for partial invalidity of ASOS UK trade mark dismissed
Legal Topics
Partial Invalidity of Trade Mark, Likelihood of Confusion, Passing Off, Reputation and Unfair Advantage, Specification Carve Out
Intellectual Property Trade Marks Partial Invalidity of Trade Mark 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 Dispute / Further Judgment Following Main Trial and Final Order

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
  2. 2 Whether there is a likelihood of confusion between ASOS and Assos marks
  3. 3 Whether ASOS UK mark takes unfair advantage of or is detrimental to Assos’ reputation

Ratio Decidendi

There is no real risk of confusion between the ASOS UK mark and the Assos CTM, even considering notional fair use. The ASOS UK mark does not take unfair advantage of or detrimentally affect Assos’ reputation, and is not liable to be prevented by passing off. The challenge to the ASOS UK mark fails.

Court Disposition

Claim for partial invalidity of ASOS UK trade mark dismissed

Orders

  • ASOS UK trade mark registration remains, subject to permissible carve-outs: Class 3 excludes preparations for treatment or prevention of cycling ailments and cleaning products for specialist cycling clothes; Class 25 excludes specialist clothing for racing cyclists