In such as footwear, clothing and head gear

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. 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
confusion.

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