Maier v Asos, High Court
Maier has an international cycling clothing business and registered a European Community Trade Mark for ASSOS in 2006. Asos is a global online fashion retail business. Maier sued for registered trade mark infringement and passing off.
The High Court dismissed the claim. There was clearly visual and aural similarity and the trade mark was highly distinctive. However, there was a lack of confusion affecting customers, which reflected the different ways in which the parties had marketed their clothes over several years. In addition, although there was a link in the minds of the average purchaser of Asos’s products between the two trade marks, there was no evidence of dilution of the ASSOS brand.
There was also a question for the High Court as to whether the ASSOS trade mark registration should be partially revoked for non-use on the basis that Maier had not used in the European Union all of the specification for the goods in the five years since registration. The Court commented that there was difficulty where a trade mark owner had made genuine use of the mark in relation to some goods within the trade mark registration’s specification but not others. The trade mark owner should not be stripped from all protection for goods which were not identical to those actually used but which were not in essence different and belonged to a single group that could not be divided in another way. The Court decided in this case that an average consumer would consider that narrowing “clothing footwear and headgear” (in the specification for the ASSOS trade mark registration) just to cycling goods would be too narrow. The clothes could be worn after the sport, as casual clothing. In fact, the ASSOS publicity material showed a model wearing the clothes at an airport rather than on a bike. It would not make sense for the ordinary consumer to narrow the specification of the goods to clothing worn during or after cycling.