In this case the disputewas 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. TheHigh 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 hadonly registered their mark in 2009 for a wide range of goods and services includingarticles of clothing and class 25 where as ASSOS had registered their mark backin 2005. The High Court’s reasoning and practical approach was that ASOS ‘s useof the mark did not constitute infringement because ASSOS word mark was onlyused on specified goods and not all goods which they had trade mark in. Inparticular, there was no genuine use of the mark across the whole range ofgoods for which it was registered.
Both parties appealed. The Court of Appealconsidered two questions; was there actual confusion and was there damage doneto the distinctiveness of the mark. The Court of Appeal held that ASOS hadinfringed ASSOS’s mark because the marks were found to be similar and that theywere visually and sounded the similar when spoken. In addition, there wassimilarity between the goods sold by ASOS and those goods covered by the ASSOS’sCTM. TheCourt of Appeals’ reasoning was that the judge at first instance errored in itsapproach to finding whether or not there was a likelihood of confusion existedin regards of the goods for which ASSOS mark had actually been used.
The correctapproach suggested was to consider in light of the speculative and fair use ofthe mark in respect of the full breadth of its specification. Although thejudges 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 wasadopted 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 withASSOS so as to steal customers from them and there was no evidence of actualconfusion.