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Rock Street, San Francisco

 In this case the dispute
was over whether ASOS had infringed ASSOS’s community trade mark in the word mark
“ASSOS” for goods such as footwear, clothing and head gear in class 25. The
High court held that ASOS had not infringed the word mark ASSOS. Furthermore,
the High Court upheld ASOS’s trade mark as a valid mark, even though ASOS had
only registered their mark in 2009 for a wide range of goods and services including
articles of clothing and class 25 where as ASSOS had registered their mark back
in 2005. The High Court’s reasoning and practical approach was that ASOS ‘s use
of the mark did not constitute infringement because ASSOS word mark was only
used on specified goods and not all goods which they had trade mark in. In
particular, there was no genuine use of the mark across the whole range of
goods for which it was registered. Both parties appealed. The Court of Appeal
considered two questions; was there actual confusion and was there damage done
to the distinctiveness of the mark. The Court of Appeal held that ASOS had
infringed ASSOS’s mark because the marks were found to be similar and that they
were visually and sounded the similar when spoken. In addition, there was
similarity between the goods sold by ASOS and those goods covered by the ASSOS’s
CTM. The
Court of Appeals’ reasoning was that the judge at first instance errored in its
approach to finding whether or not there was a likelihood of confusion existed
in regards of the goods for which ASSOS mark had actually been used. The correct
approach suggested was to consider in light of the speculative and fair use of
the mark in respect of the full breadth of its specification. Although the
judges found ASOS had infringed the ASSOS’s CTM, ASOS could rely on the “own name”
defence. This defence was applicable because in the Court’s view ASOS’s name was
adopted honestly and was derived from the Defendant’s former name “AS seen on Screen”.
It was also found that ASOS had not deliberately used the name to compete with
ASSOS so as to steal customers from them and there was no evidence of actual

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