When is your name not your name?

Asos’s 10% fall in profits yesterday was not all bad news for the online retailer as it succeeded in the Appeal Court against its decade long cycling foe, Assos (Wheels come off for cycle wear brand after taking on Asos).

Yesterday by a 2:1 majority the court accepted Asos’s own name defence. This was on the basis that such a defence can be used by companies provided that the name arises from honest practices in industrial and commercial matters. In reaching their decision, the majority relied heavily on the fact that the two names – Asos and Assos – were chosen independently of one another and there was very limited evidence of actual confusion in the marketplace. This is despite the facts that Asos:

1. had not undertaken a trade mark search when it selected its new name; and
2. had previously bid on ‘assos’ as a Google keyword (although this practice has now ceased).

In contrast the dissenting judge considered that Asos’ failure to conduct trade mark searches shifted the balance in favour of Assos.

Take home points

Make sure you run a trade mark search before you launch a new brand name. Asos’ failure to conduct a proper trade mark search was a key sticking point for the dissenting judge. It could have cost Asos dearly.

If you become aware of a potential trade mark conflict, take steps as quickly as possible to voluntarily address the conflict. The fact that Asos bid on the keyword ‘assos’ and included cycle references in connection with its Asos branded products after it became aware of the ASSOS mark again weighed on the mind of the dissenting judge.

Finally the Appeal Court’s decision illustrates how the use of survey evidence as to the extent of confusion between two trade marks can backfire. Assos’ survey evidence was pretty weak – despite the fact that it conducted a live survey at a bike show! This clearly weighed heavily on the minds of the High Court and Court of Appeal judges. This meant that there was no powerful evidence of actual confusion and a strong suggestion that there was no actual confusion at all.

What’s next

There is already some suggestion of an appeal by Assos to the Supreme Court. The third leg of the race may prove even more exciting.

Rosie Burbidge, Associate at Fox Williams LLP, contributed to this article.