Maier & Anor v Asos Plc & Anor [2013] EWHC 2831 (Ch) (19 September 2013)

Maier & Anor v Asos Plc & Anor [2013] EWHC 2831 (Ch) (19 September 2013)

The court held that the ASSOS Community Trade Mark should be partially revoked for non-use outside the range of specialist clothing for racing cyclists and certain casual wear (track-suits, t-shirts, polo shirts, caps, jackets), and for more limited goods in classes 3 and 12. The court found that ASOS' use of its sign did not infringe the ASSOS mark as there was no likelihood of confusion between the parties' goods or services, given the differences in their markets, branding, and consumer perception. The own name defence was not determinative, and there was no passing off. The ASSOS mark was not invalid due to ASOS' pre-existing rights.

Citation
[2013] EWHC 2831 (Ch)
Parties
Claimant: Roger Maier; Claimant: Assos of Switzerland SA; Defendant: ASOS PLC; Defendant: ASOS.COM Limited
Jurisdiction
England and Wales
Judgment Date
19 September 2013
Procedural Posture
Trade Mark Infringement and Passing Off Claim / High Court (chancery Division) Judgment
Outcome
Claim for trade mark infringement and passing off dismissed; partial revocation of the ASSOS CTM ordered
Legal Topics
Partial Revocation for Non Use, Trade Mark Infringement, Likelihood of Confusion, Own Name Defence, Passing Off, Partial Invalidity, Specification of Goods, Community Trade Mark Regulation
Intellectual Property Trade Marks Partial Revocation for Non Use Trade Mark Infringement Likelihood of Confusion Own Name Defence Passing Off Partial Invalidity +2 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 10 Party arguments 2 Amounts and remedies 7
Sign in to unlock

Parties

Roger Maier

Claimant

Assos of Switzerland SA

Claimant

ASOS PLC

Defendant

ASOS.COM Limited

Defendant

Procedural Posture

Trade Mark Infringement and Passing Off Claim / High Court (chancery Division) Judgment

Legal Issues

  1. 1 Whether the ASSOS Community Trade Mark should be partially revoked for non-use
  2. 2 Whether ASOS' use of its sign constitutes infringement of the ASSOS mark
  3. 3 Whether there is a likelihood of confusion between the parties' goods or services

Ratio Decidendi

The court held that the ASSOS Community Trade Mark should be partially revoked for non-use outside the range of specialist clothing for racing cyclists and certain casual wear (track-suits, t-shirts, polo shirts, caps, jackets), and for more limited goods in classes 3 and 12. The court found that ASOS' use of its sign did not infringe the ASSOS mark as there was no likelihood of confusion between the parties' goods or services, given the differences in their markets, branding, and consumer perception. The own name defence was not determinative, and there was no passing off. The ASSOS mark was not invalid due to ASOS' pre-existing rights.

Court Disposition

Claim for trade mark infringement and passing off dismissed; partial revocation of the ASSOS CTM ordered

Orders

  • ASSOS Community Trade Mark partially revoked for non-use outside specified goods in classes 3, 12, and 25
  • Claim for infringement and passing off dismissed