Assos v Asos: ASOS infringed ASSOS’s trademark but wins on the own name defence

What happened

Assos, a maker of premium cycling clothing sold through specialist shops, held a European trademark for ASSOS. ASOS, the online fashion retailer aimed at young adults, held a UK trademark for ASOS. The two businesses had traded alongside each other for over a decade without any customers actually confusing them. Assos sued for infringement and passing off. ASOS counterclaimed, arguing Assos's trademark registration covered more goods than it had actually used the name for, and that it ought to be cut down. The case turned on how courts are meant to compare trademarks, not on whether real shoppers had ever mixed the two up.

What did the court decide in Assos v Asos Plc?

The majority of the Court of Appeal found that comparing the two marks on a fair, notional basis across the full range of goods Assos's trademark covered, there was a likelihood of confusion. That meant ASOS's sign infringed the ASSOS trademark. But ASOS successfully relied on the own name defence, a rule that protects a business using its own name honestly in trade, even if that name turns out to overlap with someone else's trademark. Because ASOS had adopted its name honestly and had taken some steps over the years to avoid clashing with Assos, the defence applied. The infringement claim therefore failed in practice. The court also declared ASOS's own UK trademark partly invalid, so it no longer covers clothing or the retail of clothing. And it widened Assos's trademark a little: the trial judge had limited it to specialist clothing for racing cyclists, and the Court of Appeal removed the word 'racing'. One judge disagreed, taking the view that Assos's trademark ought to cover a wider range of casual clothing and that ASOS's conduct wasn't honest enough for the own name defence to succeed.

What we learned from this

• What I'd take from this is that winning the legal argument on paper doesn't always mean winning the case. ASOS was found to infringe on a technical comparison of the marks, but still walked away without an injunction or damages because of the own name defence.
• Courts don't just look at whether real customers were confused. They ask what would happen if the trademark were used fairly across everything it covers, even goods the owner hasn't actually sold.
• If you're using your own company name and you adopted it honestly, that can be a genuine shield against an infringement claim, even where another business got there first.
• Long, peaceful coexistence in the market doesn't settle a trademark dispute on its own. The legal test is broader than whether anyone has actually been confused so far.

Things to be aware of

The businesses involved