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UK Supreme Court refuses to hear Assos v Asos trademark case

Date:2015-08-03

  The UK Supreme Court has refused to hear the Assos v Asos trademark dispute because it does not raise any points of law that are of “public importance”.

  It means that the English Court of Appeal’s ruling in April that online retailer Asos did not infringe a Community trademark (CTM) owned by Swiss clothing company Assos is upheld.

  The appeals court ruled that Asos had caused “damage to the distinctive character” of Assos by using a similar name, and that there was a likelihood of confusion with Assos, but it granted Asos’s ‘own name’ defence and therefore cleared the online retailer of infringement.

  An ‘own name’ defence means a party cannot be prevented from using its name as long as that use is honest.

  Asos is an acronym of As Seen On Screen, the company’s name before it re-branded as Asos in the early 2000s.

  Swiss clothing company Assos had appealed against the decision to the Supreme Court, but the appeal was rejected yesterday, July 28.

  In a brief statement published on its website, the court said: “The application does not raise an arguable point of law of general public importance. The relevant principles are not in issue, only their application to the facts of the case.

  “In relation to the point of European Union law said to be raised by or in response to the application, it is not necessary to request the Court of Justice of the European Union (CJEU) to give any ruling, because the court’s existing jurisprudence already provides a sufficient answer,” the court concluded.

  The dispute centres on Assos’s infringement claim filed against Asos in 2011 at the English High Court. In 2013, Ms Justice Rose decided that there was no “likelihood of confusion” among consumers between both brands, thereby clearing Asos of infringement.

  Assos appealed against the decision and the higher court upheld Rose’s overall ruling earlier this year, despite disagreeing with her on likelihood of confusion.

  The Swiss retailer, which has had a CTM for its name since 2005, also opposed Asos’s CTM application covering the phrase ‘Asos’ on the ground that it was confusingly similar.

  In 2010, the Office for Harmonization in the Internal Market accepted Assos’s opposition and rejected the ‘Asos’ application. The rejection has since been upheld twice.

  Mark Owen, partner at law firm Taylor Wessing, said that he doesn’t find the Supreme Court’s decision to not hear the case “surprising”.

  “Cases based on EU trademark law now have a huge amount of jurisprudence from the CJEU and the European General Court to guide them.

  “The issues in the case are obviously of importance to the parties but I don’t believe they have a wider significance than many cases on trademarks. The legal issues raised are not new or unusual—it is just their application to the specific set of facts that is difficult and it is not the Supreme Court’s role to review decisions on facts,” he said.

  Mark Lubbock, partner at law firm Ashurst, added: “In this case, the appeals court looked at the issues very thoroughly before coming to a majority decision and it looks like the Supreme Court has taken the view that there are no remaining issues which raise points of law of public importance which either they or the CJEU needs to consider further.”

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