Maier & Anor v Asos Plc & Anor

A trade mark registered for a broad category of goods may be partially revoked where genuine use is proved only for a coherent sub-category. The specification must reflect how the average consumer would fairly describe the goods, having regard to the nature of the goods, the market, channels of trade and intended use.

Likelihood of confusion is assessed globally and in the context in which the sign is actually used. The absence of actual confusion becomes increasingly significant after prolonged parallel use, particularly where evidence has been gathered to test confusion. A reputation-based infringement claim requires a link and actual or seriously likely detriment. Mere similarity, search-engine association or initial interest is insufficient.

Assos owned a Community trade mark for goods including clothing, footwear and headgear. ASOS operated a large online fashion retail business under the sign ASOS and used that sign for its own-label clothing and website services.

Assos sought relief for trade mark infringement under Articles 9(1)(b) and (c) of the Community Trade Mark Regulation, passing off and related matters. ASOS counterclaimed for partial revocation for non-use and partial invalidity under Article 8(4). The court also considered, obiter, ASOS’s own-name defence under Article 12(a).

The central issues were the proper scope of the Assos registration, the likelihood of confusion or detriment, and whether ASOS had established goodwill capable of supporting the Article 8(4) counterclaim.

1. Partial revocation. The court applied Article 51 of the Council Regulation 207/2009 on the Community Trade Mark. The relevant question was whether the average consumer, informed by the actual use, would regard the registered description as fair or would identify a narrower coherent category. The court had to balance the interests of the proprietor, other traders and the public.

   Assos’s Class 25 registration was too broad. It was limited to specialist clothing for racing cyclists and casual wear including track-suits, T-shirts, polo shirts, caps and jackets. Class 3 was limited to preparations for cycling-related ailments and cleaning products for specialist cycling clothes. Class 12 was limited to bicycles and parts and fittings.

2. Article 8(4). ASOS did not possess sufficient goodwill by June 2005 in goods bearing the ASOS brand to sustain a passing-off claim against notional fair use of Assos for the full registered range. Its goodwill was principally in an online store selling other brands and celebrity-lookalike styles. The partial-invalidity counterclaim therefore failed. The court left open the further temporal question concerning the date at which goodwill would have to be assessed.

3. Article 9(1)(b). Although the marks were visually and aurally similar, the relevant goods beyond limited identical casual clothing were not very similar in context. The relevant consumer was discerning and likely to pay attention to branding, style and quality. The evidence of actual confusion, survey evidence and website analytics did not establish a likelihood that consumers would believe ASOS goods or services were connected with Assos. The infringement claim failed.

4. Article 9(1)(c). Assos had a reputation among cyclists, but the evidence of a link was tenuous. Even assuming a link, there was no evidence of actual injury or a serious likelihood of future detriment to distinctive character or repute. The claim based on dilution or swamping therefore failed.

5. Own name and passing off. The own-name issue did not arise because infringement was not established. The court noted that continued use is not automatically dishonest once a defendant learns of a similar mark; the overall circumstances and precautions taken remain relevant. The passing-off claim also failed because the evidence did not show a substantial and damaging misrepresentation.

6. The Article 8(4) counterclaim, infringement claims under Articles 9(1)(b) and (c), and passing-off claim were dismissed. The Article 51 counterclaim succeeded to the stated extent.