In a long-anticipated decision, the Court of Appeal of England and Wales (Court of Appeal) on Wednesday held, by 2-1 majority, that use of the ASOS brand by the popular online clothing retailer was defensible under the ‘own name’ defence in Community trade mark law.
The decision, which reversed the findings of the judge at first instance, will be appealed to the Supreme Court (the highest court in England and Wales) by the Claimants, who own the successful ASSOS cycling clothing business and are the proprietors of a Community trade mark for the ASSOS word mark, which has been registered since 2005.
The Court of Appeal held that use of the ASOS brand was likely to cause confusion and damage the distinctive character of the ASSOS registered mark when considering the actual and notional use of the mark based on its broad specification of goods. These are considerations which the judge, at first instance, had failed to take into account. However, the Defendants could rely on the ‘own name’ defence, notwithstanding their continued and expanded use of the ASOS mark into new territories in Europe (including in connection with the sale of cycling clothing) after becoming aware of the ASSOS registered mark.
If it stands, the decision will be of concern to brand owners as it significantly expands the potential application of the ‘own name’ defence to trade mark infringement. The decision suggests that a party who adopts an acronym (in this case based on the Defendant’s previous name ‘AsSeenOnScreen’) as a brand, in circumstances where adequate trade mark clearance searches are not conducted, and use of the acronym continues (and indeed expands) after the party becomes aware of another’s prior registered trade mark rights, amounts to honest use of the party’s own name.
The dissenting judgment of Lord Justice Sales will be of particular interest to brand owners, as it suggests that the conduct described above is not consistent with the ‘honest practices’ expected of a person relying on the own name defence to trade mark infringement. His Lordship considered that greater weight should be given to the rights of the trade mark owner and the protection of the interests of the relevant public.