ASOS saved from infringement by own name defence

Online fashion giant ASOS has successfully defended the latest phase of a trade mark infringement claim brought by cycling clothes manufacturer Assos.

The Court of Appeal held, by a 2:1 majority, that ASOS could rely on an ‘own name defence’. This saved ASOS from infringement as the court had concluded ASOS’ use of their house brand resulted in a likelihood of confusion with Assos’ registered trade mark when a notional and fair use by Assos in relation to all the goods in respect of the mark is registered, was taken into account (including those goods which ASOS had not yet applied its mark to or which it had only sold in limited numbers).

There was no real evidence of confusion in practice, despite a decade of co-existence, hence the High Court’s conclusion there was not a likelihood of confusion. However, after the High Court decision the General Court and Court of Justice of the European Union had confirmed the finding of such a likelihood between ASOS and ASSOS in parallel opposition proceedings.

The own name defence may therefore have offered the Court of Appeal a means of achieving fairness in these circumstances, without handing down a decision that sat uncomfortably beside that of the European courts.