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Cycling case highlights need to consider 'notional and fair use' of a registered trade mark

Court of Appeal confirms that, when assessing allegations of registered trade mark infringement, a Court should consider not just how the trade mark owner has used its mark, but also notional and fair (hypothetical) use of the mark in relation to all of the goods or services in respect of which it is registered.

In Assos of Switzerland SA and Anor v ASOS plc and Anor [2015] EWCA Civ 220, the Court of Appeal was asked to consider whether the defendants' use of various marks comprising "ASOS", in connection with the sale of dresses, shoes, knitwear, t-shirts, polo shirts and other casual clothing, infringed the claimants' rights in its various registered trade marks comprising "ASSOS"  for goods such as specialist clothing for cyclists and casual wear, namely tracksuits, t-shirts, polo shirts, shorts, caps and jackets.    

At first instance, it was held that infringement had not taken place. In particular, the judge held that there was no likelihood of confusion arising. She held that, given that ASSOS and ASOS had been selling their clothes bearing their trade marks for at least 8 years and no evidence of significant actual confusion arising in the marketplace had come to light, there was no likelihood of confusion.

However, in the Court of Appeal this conclusion was criticised. The Court held that the judge had fallen into error in limiting her consideration to only those particular kinds of goods that the parties had been selling to date and where they had been sold (i.e. in ASOS' case, mainly premium priced garments aimed at design and fashion conscious consumers sold via the internet, whereas in ASSOS' case mainly premium athletic garments often sold in specialist cycling shops and, to a lesser extent, sports shops). In fact, what she should have done was considered 'notional and fair use' of ASSOS' trade marks, which would include the sale of particular types of casual wear through ordinary retail outlets and on the internet, on a reasonably substantial scale, in circumstances such that direct competition between the respective parties goods could more readily take place. If she had done so, the scope for confusion would have been very much greater and thus she should have held that the claim of registered trade mark infringement was made out.

In summary, the Court of Appeal made it clear that, when it comes to trade mark infringement cases, it is necessary to consider not just the actual use that a trade mark owner has made of its mark, but also  notional and fair (hypothetical) use of the mark in respect of all of the goods or services within the scope of the specification. In many cases, this confirmation of the law will now make it easier for brand owners to prove trade mark infringement, and thus should be seen by brand owners as a positive move in their favour.