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 In this case the dispute
was over whether Asos had infringed Assos’s community trade mark (CMT) in the
word mark “Assos” for cycle clothing. The High Court held that Asos had not
infringed the word mark Asos. 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. 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; visually and
sounded 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 Asos mark had actually been used. The right method suggested was
to consider in light of the speculative and reasonable practice 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”. Therefore,
Asos had not used the name to take advantage of Assos’s goodwill. Also, the Court
of Appeal held that Asos had not intended to steal customers from them and
there was no evidence of actual confusion. The practical implication on suing a
business for infringement is that if it can be proved that a company’s name is
likely to cause confusion amongst customers and that level of confusion is high
enough to satisfy that the registered mark’s reputation has been tarnished it
is likely that use of the mark as a company name will be infringing the earlier
registered mark.

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