Roger Maier and Another v ASOS Plc and Another
|England & Wales
|Court of Appeal (Civil Division)
|Lord Justice Kitchin,Lord Justice Underhill,Lord Justice Sales
|01 April 2015
| EWCA Civ 220
|Case Nos: A3/2013/3163 A3/2014/0619
|01 April 2015
 EWCA Civ 220
Lord Justice Kitchin
Lord Justice Underhill
Lord Justice Sales
Case Nos: A3/2013/3163
Roger Wyand QC and Benet Brandreth (instructed by Bird & Bird) for the Appellants/Claimants
Daniel Alexander QC and Andrew Lykiardopoulos QC (instructed by Dechert LLP) for the Respondents/Defendants
Hearing dates: 25/26/27 November 2014
There are before the court appeals and cross appeals from three judgments of Rose J given on 19 September 2013, 16 October 2013 and 4 February 2014 concerning Community trade mark number 4580767 ("the CTM") for the word ASSOS which is owned and used by the claimants (together "Assos") and United Kingdom trade mark number 2530115 ("the UK trade mark") for the word ASOS which is owned and used by the defendants (together "Asos").
The business carried on by Assos was founded in the 1970s in Winterthur in northern Switzerland by Mr Anton Maier, the father of the first claimant, Mr Roger Maier. Mr Anton Maier was a very keen cyclist but found that the cycling clothing available at that time for enthusiasts like him was inadequate. Accordingly he recruited a designer of clothing for the Swiss skiing team to assist him in devising an improved design of cycling shorts made of lycra. He began to make and sell these shorts from his home and they proved very popular. In 1985 the business moved to premises in Lugano and some ten years later was taken over by Mr Roger Maier. He continued to develop the business to include the manufacture of a series of other items of cycling wear including bodysuits, tights, body insulators and warmers, jackets, hats and socks. They were cut and constructed to meet the needs of cyclists and to be, so far as possible, comfortable, light-weight, durable, waterproof and aerodynamic.
The business has expanded steadily over the years. In 2000 the value of wholesale sales to distributors amounted to £1.1 million but by 2011 that figure had grown to £13.8 million, and Assos now sells clothing in 37 countries worldwide including 15 Member States of the European Union. Sales take place primarily through specialist cycling goods stores; indeed, of the almost 900 retailers currently selling ASSOS clothing, fewer than 10 are not cycling specialists. Even those 10 are not general clothing stores but sell other types of sporting or outdoor activity wear. This is a deliberate policy which Assos has implemented to try to ensure that the consumer's purchasing experience is consistent with the high quality brand image associated with the ASSOS name. For like reasons, Assos has not encouraged sales on the internet and does not have an online store.
The cycling garments sold by Assos are, as the judge said, at the top end of the market in terms of quality and price. Hence a pair of ASSOS shorts sells for about £200 and the jackets and other like items are even more expensive. The judge characterised these cycling clothes as "hard core" and "highly engineered", reflecting the fact that they are the product of extensive research and development. As Mr Erwin Groenendal, the Marketing and Design Director, explained, a new model of shorts might go through 70 or 80 prototypes. It therefore comes as no surprise to learn that Assos has provided its products to a number of national cycling teams and now sponsors the Swiss Cycling Federation. Hundreds of Olympic gold medallists in various cycling disciplines have worn ASSOS clothing.
Assos has applied various trade marks to its cycling clothes over the years. Two of them incorporate the word "assos" and look like this:
Another, referred to as "the ellipse", is a stylised capital A:
Assos has also applied for various registered trade marks. So far as material to this appeal, in November 2001 it applied for an international trade mark under the Madrid system for bicycles and parts in Class 12, and for clothing articles for sports, particularly clothing for racing cyclists, in Class 25. The particular mark the subject of this application comprised the word ASSOS in its familiar rounded, lower case letter form preceded by the ellipse.
Then, on 9 September 2005, Assos applied for the CTM in respect of various goods in Classes 3, 12 and 25. The application claimed priority from Swiss application number 54890/2005 which was filed on 14 June 2005. The specification of goods in Class 25 was "clothing, footwear and headgear" and the CTM duly proceeded to registration on 11 September 2006.
The business of Asos was founded in 1999 under the name "As Seen On Screen" and was conceived as a way of meeting the demand from members of the public for clothing, accessories and other items displayed in one way or another in TV shows and cinematograph films. It has now developed into a global online fashion and beauty retail business aimed primarily at fashion-conscious young people. In contrast to the business carried on by Assos, that of Asos has always been and is now still conducted purely as an online internet retail business with no bricks-and-mortar shops. Its development has been marked by various milestones. The acronym "ASOS" was adopted as the name of the business in early 2002 and from that time it has been used as the name of its website, albeit in various logo forms, as I shall explain. At the outset the business was primarily directed to the sale of products which were identical to those seen on television or in films and more affordable versions of them known as "in the style of" products. Then, in 2003, Asos began to move away entirely from "as seen on screen" or "in the style of" products and towards general fashion clothing and, in that same year, the first defendant changed its name to Asos plc. In 2004 or 2005 Asos started to sell its own brand range of clothing including tops, trousers, skirts and lingerie alongside a wide range of third party branded goods including, not just clothing, but also jewellery, hair and beauty products, gifts and gadgets. Then, in 2007, it began to advertise its own brand goods on the website under the name ASOS.
The business has been staggeringly successful. In its first year it achieved a turnover of just over £1 million and 10 years later that had risen to nearly £340 million. In the year ending 31 March 2012, the turnover was nearly £500 million and, as at 18 December 2012, Asos had a market capitalisation of about £2 billion and was the second most traded stock on AIM by value. About half the turnover is generated in the United Kingdom but there are now country-specific websites targeting France, Germany, Spain, Italy, the United States and Australia. Over 67,000 product lines are carried, including almost every kind of garment commonly worn by young men and women. As of September 2012, Asos had a database of 13.9 million customers, around 6.2 million of whom were based in the United Kingdom.
In terms of sales mix, own label goods now account for about 55% of Asos' global sales and include maternity and petite ranges, vintage styles, ethical and eco-conscious collections, and make up and make up accessories. However, the business still sells over 400 different third party brands of women's wear. The size and success of the business have attracted a good deal of media attention, summarised by the judge in these terms at paragraphs  to  of her judgment of 19 September 2013:
"14. … It features frequently in the media and has sponsored many fashion programmes such as "Next Top Model" in the US, UK, Canada and Australia. Its clothes have been worn by celebrities such as Fearne Cotton and Jessie J. Perhaps the most famous celebrities wearing ASOS clothing are Michelle Obama and her daughters Malia and Sasha. An article in the magazine Grazia Daily on 7 November 2012, following President Obama's re-election, opened with the sentence "From a Jason Wu gown to an ASOS skirt, Michelle Obama has navigated the past four years as America's First Lady in style". The photograph of the President hugging his family on the evening of his re-election – voted "the most liked Facebook photo of all time" – featured the First Lady wearing an ASOS dress, reported to have cost $90 on the ASOS online store.
15. In addition to its websites, ASOS has a strong internet presence on social media sites. As at 17 December 2012, ASOS' Facebook page had 2.2 million 'likes' or followers, making it the third-ranked retailer in the UK behind TopShop and Amazon. It also has 1.4 million followers through Google+; 430,000 followers on Twitter (second only to TopShop); 383,721 Instagram followers and 20 Pinterest boards. Its YouTube channel launched on 30 October 2008 now has 8,500 subscribers and has been viewed over 11 million times. ASOS hosts four blogs featuring music, film, style advice and photos of celebrities and non-celebrities looking stylish and fashionable. It has received a slew of awards both for its fashion goods and for its financial performance. It was Online Retailer of the Year in the Cosmopolitan Fashion Awards in 2010 and in the same year was awarded Company of the Year by AIM. Nicholas Robertson, one of the founders of ASOS and now its Chief Executive Officer, was named the third most powerful...
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