Maier & Anor v Asos Plc & Anor

For registration challenges, the court must assess the fair, notional use of the applied-for mark in all circumstances in which it might be used if registered. This differs from infringement, where the assessment concerns the use actually made of the sign. A broad specification may be limited by excluding a distinct category of goods, but it cannot be cut down by excluding only a characteristic or intended market of goods. Where the notional use would create no real likelihood of confusion, claims under sections 5(2)(b) and 5(4)(a) fail. The same circumstances may also defeat a section 5(3) claim where dilution or unfair advantage would arise only from excluded specialist goods or conduct potentially actionable as passing off.

The judgment concerned the remaining part of Assos’ claim against the registration of ASOS’s United Kingdom trade mark. The earlier judgment had determined the parties’ wider trade-mark dispute and reduced the scope of Assos’s Community trade mark. The present issue was whether specified goods and retailing services in ASOS’s registration should be declared invalid under section 47 of the Trade Marks Act 1994, by reference to sections 5(2)(b), 5(3) and 5(4)(a).

The central questions were whether the marks and goods gave rise to a likelihood of confusion on the basis of fair, notional use, whether the specification could be limited to exclude specialist cycling goods, and whether the registration could give rise to dilution, unfair advantage or passing off.

1. Registration and infringement tests. The court held that the assessment of a registration challenge must consider all circumstances in which the applied-for mark might fairly and notionally be used if registered. This differs from an infringement claim, which is assessed by reference to the specific use actually made of the sign. The distinction explained in O2 Holdings, O2 (UK) Limited v Hutchison 3G UK Ltd [2008] ECR I-4231 was applied.
2. Likelihood of confusion. Although the ASOS mark was sufficiently similar to the earlier Assos mark and some goods were identical or similar, fair and notional use would not create a material likelihood of confusion. The court applied the relevant factors identified in Interflora v Marks & Spencer [2013] EWHC 1291. The relevant consumers would be expected to recognise the difference between ASOS and Assos, including if ASOS used its mark prominently on casual clothing.
3. Specification of goods. Applying the principle discussed in Omega Engineering Incorporated v Omega SA [2012] EWHC 3440 (Ch) and derived from Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619, a broad class may be restricted by excluding a distinct category of products. It was permissible and appropriate to exclude from Class 3 preparations for cycling ailments and cleaning products for specialist cycling clothes, and from Class 25 specialist clothing for racing cyclists.
4. It was not permissible to exclude t-shirts or tracksuits merely because they might be targeted at cyclists or associated with cycling. Such use might nevertheless support a passing-off action. The section 5(4)(a) claim failed because there was no real risk of confusion.
5. The section 5(3) claim also failed. The only apparent risk of dilution or unfair advantage arose from specialist cycling goods, which had been excluded, or conduct capable of founding a passing-off claim. The challenge to the ASOS UK mark therefore failed.

The judgment was a further first-instance judgment following the main judgment delivered on 19 September 2013, reported as Roger Maier v ASOS plc [2013] EWHC 2831 (Ch), and a subsequent final order. It determined the remaining paper-based issue concerning partial invalidity of ASOS’s United Kingdom trade mark.