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The “own name” defence to trade mark infringement proceedings

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13/05/2015

In Maier v Asos Plc [1] the claimant was appealing against a High Court decision that there was no likelihood of confusion between the defendant’s word mark ASOS, registered as a UK trade mark in relation to skin care products, clothing and the bringing together of those products for retail purposes, and its own word mark ASSOS, registered as a Community trade mark in relation to cycling products and clothing, and casual clothing. The judge had also refused to grant a declaration of invalidity in respect of the ASOS mark, although she did agree to exclude specialist cycling-related goods and services from the registration.

Subsequently, the EU General Court upheld a Board of Appeal decision that there was a likelihood of confusion between a proposed Community trade mark for Asos and the existing Community trade mark.

On appeal, the central issue was the applicability of the “own name defence” afforded by Article 12 of the Community Trade Mark Regulation. This provides that an otherwise infringing act cannot be prevented by the trade mark proprietor where the infringer is using his own name, so long as he uses it in accordance with honest practices in industrial or commercial matters.

The Court found that there was a likelihood of confusion on the part of the public, at least in respect of the sale by the defendant of casual wear and the provision of its retail services in relation to such casual wear. The Court was united in finding that the judge at first instance had erred by only considering the likelihood of confusion in relation to the actual use made by the claimant of the ASSOS mark and not also the notional and fair use of the mark in respect of all the goods falling within the scope of the specification.

ASOS argued that it could rely on Article 12 as it was using its own name (one that it had registered shortly after the claimant’s application to register the mark ASSOS). The Court of Appeal – by a majority – agreed.

The Court examined the conduct of ASOS before and after the proceedings began. The mark ASOS was clearly derived from the company’s earlier corporate name, As Seen On Screen, without knowledge of ASSOS and there was no evidence that the name ASOS had been chosen dishonestly. It appeared that ASOS had also taken steps to exclude certain goods from its website to minimise the risk of confusion with the claimant’s ASSOS goods. On the other hand, it had not taken effective steps to ensure that it was free to adopt the ASOS mark without infringing the rights of a third party. Taking this into consideration, the majority of the Court found that the own name defence was made out.

Sales LJ, in a dissenting judgment, took the view that as a matter of ordinary “honest practices” in the commercial context it was incumbent upon ASOS to have adopted a different sign to avoid creating a likelihood of confusion with the claimant’s goods. We understand that the claimant is likely to seek leave to appeal to the Supreme Court on this point.

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[1] [2015] EWCA Civ 220

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