Maier v ASOS Plc

JurisdictionEngland & Wales
CourtChancery Division
JudgeMrs Justice Rose
Judgment Date04 Feb 2014
Neutral Citation[2014] EWHC 123 (Ch)
Docket NumberCase No: HC11C04453

[2014] EWHC 123 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

Mrs Justice Rose

Case No: HC11C04453

Between:
(1) Roger Maier
(2) Assos of Switzerland Sa
Claimant
and
(1) Asos Plc
(2) Asos.com Limited
Defendant

Mr. Roger Wyand QC and Mr. Benet Brandreth (instructed by Bird & Bird LLP) for the Claimants

Mr. Daniel Alexander QC and Mr. Andrew Lykiardopoulos (instructed by Dechert LLP) for the Defendants

FURTHER JUDGMENT

Mrs Justice Rose
1

I handed down the main judgment in this case on 19 September 2013 in Roger Maier v ASOS plc [2013] EWHC 2831 (Ch) ('the Main Judgment'). On 16 October 2013, after a further short hearing to deal with various consequential matters, I made the final order on the matters dealt with in the Main Judgment.

2

There was one matter left over for my decision, namely the part of Assos' claim that challenged the registration of ASOS' UK trade mark. It was agreed that the claim for partial invalidity of UK trade mark number UK00002530115 would be dealt with after the main trial and on the papers. Both parties have made written submissions to me on that issue.

3

To recap briefly the effect of the Main Judgment and final order:

i) ASOS' claim pursuant to Article 51 CTMR for partial revocation of Assos' CTM has been successful to the extent that:

a) the scope of the CTM as regards goods in Class 3 is limited to preparations for the treatment or prevention of ailments associated with cycling; cleaning products for specialist cycling clothes;

b) Class 12 is limited to bicycles and parts and fittings thereof;

c) Class 25 is limited to specialist clothing for racing cyclists; jackets, t-shirts, polo shirts, tracksuit tops, tracksuit bottoms, casual shorts, caps. 1

ii) the counterclaim for partial invalidity of the CTM under Article 8(4) CTMR was dismissed because ASOS did not establish that they had sufficient goodwill in their sign as at June 2005 (the priority date for Assos' mark) to have been able to prevent the registration of Assos' mark on the basis of a passing off action.

iii) the claim by Assos under Article 9(1)(b) CTMR that ASOS' sign infringed its CTM was dismissed on the basis, primarily, that the relevant average consumer was not likely to be confused into thinking that ASOS products are made by Assos or by a company linked with Assos.

iv) the claim by Assos under Article 9(1)(c) CTMR was dismissed on the basis that there was no evidence that the presence of ASOS in the market had diluted the ability of Assos to be associated with its mark and no evidence of 'swamping'.

4

ASOS' UK trade mark was filed on 28 October 2009 and covers a very wide range of goods within Classes 3, 8, 9, 11, 14, 18, 21, 25 and 26, and services within Class 35 (retailing goods by internet or other means) and Class 36 (providing credit). The mark on which Assos relies in challenging the ASOS UK mark is the CTM which was the subject of the Main Judgment. It is accepted by Assos for present purposes that

that mark has the reduced scope resulting from my final order. The parts of the ASOS mark registration challenged by Assos are as follows — the items underlined are alleged to be identical and the remainder to be highly similar to the items protected by the Assos mark:

Class 3 Skin care preparations; preparations for the bath and shower; moisturisers; body lotions and creams; moisturising creams; body oil; non-medicated skin care beauty products; skin care products for personal use, namely, face, eye and lip moisturisers; face and skin creams; lotions and serums;

Class 25 Articles of clothing; headgear; hats; caps; berets; belts (being articles of clothing); shirts, casual shirts, t-shirts, vests, camisoles, bodysuits, polo shirts, sports shirts, football and rugby shirts; trousers, jeans, shorts, sports shorts, underwear; tracksuits; articles of outerwear, coats, jackets, casual jackets, waterproof and weatherproof jackets and coats, body warmers; sweatshirts; jumpers; headbands; menswear; womenswear.

Class 35 The bringing together for the benefit of others, of a variety of bathing and personal cleansing and care products, clothing, sporting goods, fitness equipment, enabling customers to conveniently view and purchase those goods from an Internet web site or by means of telecommunications or by means of a global network or by mail order catalogue or from a retail store.

5

The claim for the partial invalidity of the ASOS UK mark is brought pursuant to section 47(2) of the Trade Marks Act 1994. This provides that the registration of a trade mark may be declared invalid on the ground that there is an earlier mark in relation to which the conditions in section 5(1), ( 2) or (3) pertain, or that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied. Section 47(5) provides that a challenge may be made to part only of a registration. Assos relies here on the following provisions of the Trade Marks Act 1994:

i) Section 5(2)(b) which provides that a mark shall not be registered if, because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark;

ii) Section 5(3) which provides that a trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the European Union and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark;

iii) Section 5(4)(a) which provides that a trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented by the law of passing off protecting an unregistered mark or other sign used in the course of trade.

Section 5(2)(b) and section 5(4)(a) of the Trade Marks Act 1994

6

Some elements of the test to be applied under section 5(2)(b) are the same as I considered in the parts of the Main Judgment dealing with the alleged infringement under Article 9(1)(b) of the CTMR. I am satisfied that the ASOS UK mark is sufficiently similar to the earlier Assos mark to fall within this provision. I am also satisfied that some of the goods for which the ASOS mark is registered are identical with or similar to products or services which fall within Assos' registration, even with the reduced scope for the CTM as set out in the final order. For example, in Class 3, the products referred to in the ASOS registration include skin care preparations, body lotions and creams. These are identical with, or similar to, Assos products which I described in paragraph 63 of the Main Judgment. In Class 25 the ASOS UK mark covers t-shirts, polo shirts, tracksuits, casual jackets and weather proof jackets.

7

The key question is whether there is a likelihood of confusion between the goods produced under the ASOS UK mark and the...

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