Who: Roger Maier and Assos of Switzerland SA (“Assos”), Asos Plc (“Asos”), Societe Anonyme des Bains de Mer at du Cercle des Etrangers a Monaco (“SAB”)and Anglofile International Ltd (“AI”)
When: 19 September 2013
Where: the UK High Court (Assos) and UK Intellectual Property Enterprise Court formerly the Patents County Court (Casino de Monte Carlo)
Law stated as at: 9 October 2013
In two recent “David & Goliath” contests over brands, the limits of the protection given by trade mark registration were underlined. The courts also took a robust view of when consumers might be confused.
In the High Court case relative minnow Assos cycling wear sued online retail giant Asos for trade mark infringement.
In the Intellectual Property Enterprise Court case the boot was on the other foot when the Monaco state gambling monopoly (“SAB“), owner of registered trade marks “Monte Carlo” and “Casino de Monte-Carlo” (the “SAB Marks“) went into bat against relative upstart Anglofile International (“AI”) over its use of ” Monte Carlo Casino Entertainment”.
The businesses and their trade mark registrations
Asos operates a global online fashion business under the brand name Asos. The business was founded in 2000.
Asos filed an application for an “Asos” Community Trade mark in 2005 covering a wide range of goods and services including naturally a diverse selection of clothing types in class 25. This has been opposed and was still not registered as of 9 October 2013. A UK application fared better. It was filed in October 2009 for a similar range of goods and services and was accepted in December 2012.
Switzerland-based Assos, meanwhile, runs an international operation specialising in cycling clothing. In September 2006, it obtained a CTM registration for “Assos” in respect of various goods and services, including “clothing, footwear, headgear” (the “Mark”). It was the Mark that Assos claimed Asos had infringed.
In the other case, SAB had registered the SAB Marks for casino services and related goods, with an EU priority date of 18 August 2009.
AI used “Monte Carlo Casino Entertainment” in respect of “fun casino entertainment.” This included the provision of tables and croupiers for entertainment at weddings etc.
In both cases the claimants alleged trade mark infringement and passing off.
Should the ASSOS mark be partially revoked?
Before assessing whether there had been infringement of the Mark by Asos, the High Court had to judge whether the Mark itself was valid in its full form, starting with Asos’ counterclaim for the partial revocation of the registration of the mark.
In defending the partial revocation claim, Assos had to show that they had made genuine use of the Mark for the goods and services for which it had been registered. One of the challenges faced here by Assos was the very broad and non-specific description used in the registration under the clothing class 25. Had they been making genuine use of the Mark in respect of all types of clothing and footwear covered by the “Clothing, footwear and headgear” specification?
Based on case law, the issue was whether the average consumer would think that “clothing, footwear and headgear” was a fair description of the use of the Mark by Assos or whether the actual use could be confined to a narrower category. The answer favoured the narrower category.
Whilst there was nothing about the goods that Assos sold which would prevent them from being worn after a sporting activity or even in casual situations (indeed, publicity materials showed a model wearing the clothes in an airport lounge), it was also fair to say that there were many categories of ordinary clothing which Assos did not sell, such as dresses, skirts, shoes, jeans.
Assos had clearly focused on specialist cycling clothing. As the “clothing, headgear and footwear” scope of the CTM clearly went beyond this, the High Court ultimately decided to limit the extent of the clothing goods for which the Mark was registered to “specialist clothing for racing cyclists and casual wear including track-suits, t-shirts, polo shirts, caps and jackets”.
Had Asos infringed the ASSOS mark?
The initial claim by Assos for infringement of their Mark was based on article 9(1) of the Community Trade Mark Regulations (“CTMR”). This provides that the proprietor of a mark shall be entitled to prevent third parties from using in the course of trade any sign:
• which is identical to the Community mark in relation to identical goods or services (9(1)(a));
• which is identical or similar to the Community mark in relation to identical or similar goods and services where there is a likelihood of confusion on the part of the public (9(1)(b)); or
• which is identical or similar to the Community mark for goods and services which are not similar to those for which the mark is registered but where there the Community mark has a reputation in the EU and use of the sign by another would take unfair advantage of or would be detrimental to the distinctive character of the Community mark.
Not surprisingly, the court found that there was visual and aural similarity between Asos and ASSOS. However, while there was overlap in terms of Asos’ use within an identical class of goods, it could not be said that Assos, as a supplier of cycling clothing, had a separate reputation regarding casual clothing.
Given that the goods sold by Asos which were not within the cycling clothing realm were sufficiently different to Assos’ lines, and given that Assos did not have a strong online sales channel as Asos relies upon, the similarities in the uses of the marks were diminished.
In light of this, despite both parties having marketed their clothes for several years, the likelihood of actual confusion on the part of the public was seen to be very small. As a result, the High Court rejected the Assos infringement claim.
Was there any passing off by Asos?
In addition to the claim of trade mark infringement, a claim was brought by Assos for passing off .The cycling clothes company was not able to prove, however, that a consumer faced with an Asos garment would mistake it for an Assos item of clothing.
Given that the goodwill in the Assos’ business was limited to cycling gear, the court found that it was unlikely that this goodwill had been at all damaged by Asos’ sale of casual clothing.
The passing off claim was therefore dismissed.
Did “Monte Carlo Casino Entertainment” infringe “Casino de Monte-Carlo” or “Monte-Carlo”?
AI’s services were held to be identical to those for which SAB had registered the SAB Marks. However the Court considered that partly because of the price charged, the average consumer of AI’s services would give close attention to them and would have close interaction with IA because it would be a special event for the consumer.
Based on this, it was held that there was no likelihood of confusion by the average consumer as to whether AI’s services came from or were connected to SAB. Therefore the infringement claim under s. 9 (1)(b) of the CTMR failed.
On the claim by SAB under s9 (1)(c) of the CTMR, the Court was not persuaded either that SAB had the requisite reputation in the SAB Marks or that AI’s use of “Monte Carlo Casino Entertainment” would “dilute, tarnish or adversely affect” the SAB marks’ functions.
Therefore this trade mark infringement failed also.
Was there any passing off by AI?
Given its views on confusion in the context of the claim under CTMR s9(1)(b) and the lack of any evidence of consumer confusion or confusion, it was not altogether surprising that the Court also rejected SAB’s passing off claim.
Why this matters:
In both cases the court took a rather robust view of what might cause the average relevant consumer confusion or deception.
Evidence of actual confusion was also absent in both cases and given that confusion is key to establishing a case in passing off and a case of infringement under CTMR s9(1)(b) as well as potentially relevant to a case under s9(1)(c), both claimants suffered as a result.
The outcomes here also emphasise that a significant amount of consideration needs to be given as to how best to describe the goods and services to be covered by a trade mark registration.
Assos used a description which was broad and, as such, it was easier for Asos to successfully argue in favour of partial revocation.
Companies should think about particular sub-categories within which their goods might fall and try to strike a balance between ensuring adequate protection for their brand within the use and potential use, whilst not covering so many categories that part of the registration may end up being revoked.