In thiscase the dispute was over whether ASOS had infringed ASSOS’s community trademark in the word mark “ASSOS” for goods such as footwear, clothing and headgear in class 25. The High court held that ASOS had not infringed the word markASSOS. 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 goodsand services including articles of clothing and class 25 where as ASSOS hadregistered their mark back in 2005. The High Court’s reasoning and practicalapproach was that ASOS ‘s use of the mark did not constitute infringement becauseASSOS word mark was only used on specified goods and not all goods which theyhad trade mark in. In particular, there was no genuine use of the mark acrossthe whole range of goods for which it was registered. The Court of Appeal consideredtwo questions; was there actual confusion and was there damage done to thedistinctiveness of the mark.
The Court of Appeal held that ASOS had infringedASSOS’s mark because the marks were found to be similar and that they werevisually and sounded the similar when spoken. In addition, there was similaritybetween 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 findingwhether or not there was a likelihood of confusion existed in regards of thegoods for which ASSOS mark had actually been used. The correct approach suggestedwas to consider in light of the speculative and fair use of the mark in respectof the full breadth of its specification. Although the judges found ASOS hadinfringed the ASSOS’s CTM, ASOS could rely on the “own name” defence.
Thisdefence was applicable because in the Court’s view ASOS’s name was adoptedhonestly and was derived from the Defendant’s former name “AS Seen On Screen”. Itwas also found that ASOS had not deliberately used the name to compete with ASSOSso as to steal customers from them and there was no evidence of actualconfusion.