Maier & Anor v Asos Plc & Anor

Consequential relief after an appeal should be confined to matters properly raised and necessary to give effect to the judgment. The court may refuse late requests for undertakings equivalent to injunctions, declarations not previously sought, and advance liberty to apply based on possible future changes. A material future change may support fresh proceedings or an application to be decided on its merits. Where the overall winner has faced substantial success by the other party on discrete issues, costs may be apportioned to reflect that mixed outcome. The appellate court may also adjust trial costs where remittal is not sought. A preliminary reference is unnecessary where the court can decide the matter without one.

Following the Court of Appeal’s main judgment in [2015] EWCA Civ 220, the court considered outstanding consequential matters in the dispute between Roger Maier and Assos of Switzerland SA and ASOS plc and ASOS.com Limited. The appeal arose from orders of the High Court in [2013] EWHC 2831 (Ch) and [2014] EWHC 123 (Ch) concerning alleged trade mark infringement and invalidity.

Assos sought undertakings, declarations, liberty to apply, different costs orders, and a reference to the Court of Justice. The central questions were whether those forms of relief were appropriate after the main appeal and how costs should reflect the parties’ mixed success.

1. Consequential relief. The court refused to require undertakings from ASOS. Although framed as undertakings, the relief sought was in substance injunctive relief. It had not been sought in the Appellant’s Notice or in the appeal submissions and was therefore sought too late. The refusal did not necessarily leave ASOS free to undertake the specified activities. Any future complaint about a change in its manner of trade would have to be considered in all the circumstances existing at that time.
2. The court refused declarations concerning infringement and invalidity. They were neither appropriate nor necessary because Assos had not previously claimed declarations of that kind and the judgments were sufficiently clear. The appeal against paragraph 1 of the 2013 Order was dismissed without qualification.
3. Liberty to apply. No advance liberty to apply was granted in relation to the own-name defence under Article 12(a) of the Regulation. If there were a material change in circumstances, Assos could make an application or commence proceedings, which would be determined on the merits in accordance with established principles.
4. Costs. ASOS was the overall winner, but Assos had prevailed on the UK mark issue and had succeeded on discrete issues concerning infringement and the conditional attack on the CTM. ASOS was awarded 65% of its costs of the appeal. It was ordered to pay Assos’s costs of and occasioned by the UK mark issue. ASOS was also ordered to repay £100,000 of the trial costs it had recovered, with interest, in addition to the agreed sum relating to the UK mark. Assos was directed to pay £50,000 on account of ASOS’s costs. The court did not remit the costs question to the trial judge because neither party had invited that course.
5. The court refused permission to appeal to the Supreme Court and declined to make a preliminary reference to the Court of Justice because no such issue had been identified at the hearing and no reference was necessary to decide the appeal. No order dismissing the respondents’ notices was made.

• High Court of Justice, Chancery Division. The underlying proceedings resulted in orders referred to as [2013] EWHC 2831 (Ch) and [2014] EWHC 123 (Ch).
• Court of Appeal (Civil Division). The main appeal was decided in [2015] EWCA Civ 220. The appeal against the finding of non-infringement was dismissed by a majority, and ASOS was held entitled to rely on the own-name defence. This judgment determined the outstanding consequential relief, reference, permission and costs matters.