Assos v ASOS - Cycle Clothing Conflict
The English High Court has held that the online fashion designer and retailer ASOS is not liable for infringing the registered trade mark of Assos of Switzerland, the specialist cycling clothing company.
The claimant is a top-end designer and manufacturer of cycling kit and related specialist clothing, sold under various trade marks incorporating the ASSOS brand name. The company also manufactures some casual clothing wear, although the primary focus of its business is on the specialist cycling clothing market. It markets its products primarily in specialist cycling publications, with only a very limited focus on Internet sales (the company preferring its distributors to sell through physical retail stores).
The defendant, ASOS plc, is an online-only fashion and beauty retail company, launched in 1999 under the name “As Seen On Screen”, but has used the acronym ASOS for over a decade. From around 2004/2005, the company started to design and sell its own-brand range of clothing for men and women under the ASOS mark.
The claimant owned the word ASSOS as a registered Community Trade Mark (CTM) in classes 3, 12 and 25, each covering a very broad, generic list of goods (eg, “vehicles”; “clothing, footwear and headgear”). It also used a number of logo marks incorporating the name ASSOS in a rounded, stylised font. The company sued ASOS for passing off and for trade mark infringement under Articles 9(1)(b) and (c) of the Community Trade Mark Regulation, alleging that the marks ASSOS and ASOS were confusingly similar and used in relation to identical/confusingly similar goods; and that use of the ASOS mark was detrimental to the distinctive character/repute of the ASSOS mark.
ASOS counterclaimed for partial revocation of the ASSOS mark on the basis of nonuse: there were many types of clothing for which the claimant had not used its mark, such as shoes and dresses. (ASOS also counterclaimed for invalidation of the ASSOS registration based on its use of the ASOS mark before the priority date of the mark – however, this claim was rejected on the basis that ASOS could not show relevant goodwill in its own-brand clothing range at that time).
As regards the revocation claim, the court held that when considering the scope of use that had been made of a trade mark, the consumer will consider not only the goods in question, but also other factors such as sales channels/intended use.
ASSOS had used its mark on specialist cycling wear, but also had some sales of more general casual wear. What would the average consumer consider to be fair description of all these goods together?
It was considered that restricting the specification to “clothes to be worn during or after cycling” would make no sense to ordinary consumers.
The court held that the average consumer would take into account that ASSOS had chosen not to go down the same route as brands such as NIKE in developing an extensive collection of non-specialist casual sports clothing, but instead had retained a focused approach, limiting the types of clothing to which the ASSOS mark was applied. It was important that ASSOS does not market its goods on the High Street or through general clothing stores. Ordinary consumers would not regard the company as selling ‘clothing’ as such, but rather a distinct subset of clothing, namely “specialist clothing for racing cyclists and casual wear including tracksuits, T-shirts, polo shirts, caps and jackets”. The class 25 specification was limited accordingly. The class 3 specification was also limited to reflect the intended purpose of the products for which use of the mark had actually been shown (ie, “preparations for the treatment/prevention of ailments associated with cycling; cleaning products for specialist cycling clothes”). The broad term “vehicles” in class 12 was limited to “bicycles and parts/fittings therefor”.
Unsurprisingly, the marks ASOS and ASSOS were held to be visually and orally similar. To the extent that the partially revoked mark covered casual clothing, the ASOS mark was being used in relation to identical products. However, the court held that the reputation of the ASSOS mark was in relation to cycling gear; there was no separate reputation as regards casual clothing (despite limited use of the ASSOS mark in relation to such products). Taking into account that reputation, the goods sold by ASOS that were not identical to ASSOS’ goods were not very similar at all. Some goods (eg, shorts/Tshirts) were identical – but beyond that there was limited similarity, since ASSOS’ reputation was so closely linked with specialist cycling clothing.
When assessing confusion, the identity of the average consumer of ASSOS goods (as covered by the partially revoked mark), was relevant. Their attention is high because ASSOS products are expensive (with no suggestion that the company intended to expand the brand beyond the premium clothing sector).
Evidence of people contacting ASSOS thinking they were ASOS to complain of products was held not to be sufficient evidence of confusion – merely that consumers had contacted the wrong entity, not that they had bought ASOS goods thinking they were ASSOS goods. No other evidence relied on by ASSOS established that the relevant average consumer was likely to be confused into thinking that ASOS was linked with the ASSOS mark. The Article 9(1)(b) claim therefore failed.
As regards the Article 9(1)(c) claim, there was no evidence that the ASOS mark had diluted the ASSOS mark, or its cachet. The fact that ASSOS had limited its web/general media presence (where the ASOS mark was primarily used) was important; and also the fact that there was no evidence to suggest a dramatic future change in ASSOS’ approach to its marketing techniques.
The passing off claim also failed. The court held that ASOS had not done anything that could damage the goodwill of ASSOS as a maker of cycling apparel.
In relation to the trade mark infringement claim, ASOS had tried to rely on the ‘own name’ defence. The court held that the focus of enquiry here must be whether the defendant has acted fairly in relation to the trade mark owner. The adoption of the ASOS mark was as an honest acronym of the company’s original trading name, “As Seen On Screen”. However, no trade mark searches had been undertaken at the time of that adoption.
Importantly, the court held that when a defendant, using its own name as a trade mark, learns of a claimant’s objection to such use, it is not automatically barred from relying on the own name defence. Here, ASSOS’ objections were based on the assumption that the goods covered by its mark were much broader than was actually merited; confusion was likely to be limited in practice (as confirmed by the evidence); and ASOS had also taken steps to minimise confusion (eg, it had stopped selling ASOS branded shorts or other products related to cycling; it had also made changes to its website so that anyone searching for certain ‘cycling’ terms was redirected to the ASOS homepage, meaning they would have to search through every product to find the item they were looking for (eg, a motorcycle jacket)).
The purchase by ASOS of ‘ASSOS’ as a keyword was explained as being because it was a common misspelling of ASOS; there was no suggestion of its being an attempt to misdirect ASSOS customers. However, the judge was concerned by this: given the much stronger web presence of the ASOS brand, such conduct could easily lead to a kind of ‘swamping’ of the ASSOS brand from which the latter was entitled to protection.
There had also been a slight change to the stylisation of the ASOS logo after it had become aware of the ASSOS mark, depicting the lower case letters in a more rounded font (which was closer to the rounded stylisation of the ASSOS brand as used by the claimant). The court held that this was unfortunate, since it brought the ASOS mark closer to the ASSOS typeface. Although it was not suggested that this was deliberately to make the brand look more like ASSOS, it was relevant to the question of honest practices. There was no need to adjudicate the question of the own name defence because there had been no infringement. However, the judge was keen to note the aspects of ASOS’ conduct which could be open to criticism if further assessment were required on appeal.
The judgment confirms the increasing tendency of UK courts to take account of commercial reality when assessing trade mark infringement claims – although on the face of it the marks ASSOS and ASOS were clearly similar, and being used at least to some extent in relation to identical goods, the respective marketing practices and reputations of the parties meant that confusion as to trade origin, and damage to the earlier mark’s reputation, was unlikely. The decision seems likely to be appealed, and we await further developments with interest.