Maier & Anor v Asos Plc & Anor

On partial revocation for non-use, a trade mark specification must reflect the goods for which the mark has genuinely been used, but it must not be reduced to the precise items sold. The court must adopt the average consumer’s fair description and preserve protection for commercially equivalent variations.

Trade mark infringement requires a global assessment based on notional and fair use across the valid specification, not merely the proprietor’s actual trading model. An own-name defence depends on fair conduct towards the proprietor’s legitimate interests in all the circumstances. On the facts, the defence succeeded. A later United Kingdom registration was nevertheless invalid to the extent that notional fair use of both marks created a likelihood of confusion.

Maier & Anor v Asos Plc & Anor concerned the similar signs ASSOS and ASOS. Assos owned a Community trade mark for ASSOS and sold specialist cycling clothing with limited casual wear. Asos operated a large online fashion retail business and owned a United Kingdom registration for ASOS.

Rose J’s main judgment, [2013] EWHC 2831 (Ch), partially revoked the Community mark for non-use and rejected infringement and passing off. Her later judgments settled the specification and rejected the challenge to the United Kingdom mark, including in [2014] EWHC 123 (Ch). The appeals raised revocation, infringement under Articles 9(1)(b) and 9(1)(c), the own-name defence, and invalidity of the United Kingdom mark.

1. The court allowed the appeal in part. By a majority of Kitchin and Underhill LJJ, the Community mark was properly restricted after partial revocation to specialist clothing for cyclists and the identified casual items. The word “racing” had to be deleted. The evidence did not justify protection for casual wear generally. Sales LJ would have retained the broader category of casual wear.

2. Assos established infringement under Article 9(1)(b) of Council Regulation (EC) No 207/2009, subject to the defence. The judge had wrongly assessed similarity and the average consumer by reference to Assos’s actual specialist and premium use. The correct comparison required notional and fair use of ASSOS for all goods in the valid specification, including ordinary retail and internet sales. Given the strong visual and aural similarity, there was a likelihood of confusion for Class 25 goods and associated retail services.

3. The court also found Article 9(1)(c) infringement, again subject to the defence. The ASSOS mark had a reputation among cyclists. Normal and fair use of the registered mark could be weakened by ASOS use in circumstances giving rise to confusion. The finding extended no further than the Article 9(1)(b) infringement. Underhill LJ concurred, though with hesitation.

4. By a majority of Kitchin and Underhill LJJ, Asos succeeded under Article 12(a). Its name had been independently adopted; its business had developed without actual marketplace confusion; and it had taken steps to avoid cycling-related sales and searches. On the evidence, it had acted fairly towards Assos’s legitimate interests. Sales LJ dissented on this issue.

5. The court allowed Assos’s challenge to the United Kingdom ASOS registration. Validity fell to be assessed at the 2009 filing date, before the later partial revocation. The registration was invalid for all Class 25 goods and Class 35 services relating to those goods, while the judge’s remaining Class 3 ruling stood. The other appeals and the cross-appeal were dismissed.

• Court of Appeal (Civil Division): Allowed Assos’s appeal in part. It marginally broadened the retained Community mark specification, found infringement subject to the own-name defence, and extended the invalidity declaration against the United Kingdom mark.

• High Court, Chancery Division, Intellectual Property and Community Trade Mark Court: Rose J’s main judgment, [2013] EWHC 2831 (Ch) , partially revoked the Community mark, rejected infringement and passing off, and left the own-name defence undecided.

• High Court, Chancery Division: On 16 October 2013, Rose J clarified the restricted specification and dealt with costs.

• High Court, Chancery Division: Rose J’s third judgment, [2014] EWHC 123 (Ch) , rejected the challenge to the United Kingdom ASOS registration.