“I would say the company creed at Assos is always to aim higher. Assos prides itself on the very high quality of ASSOS clothing. Research and development activity is a big part of Assos’s business. Roche Maier, the Assos CEO, goes out every day on the bike to test prototypes of new clothing Assos is developing. When Roche returns from his ride the clothing designers go and take notes of his feedback. From conception to shop floor, it takes a long time for Assos to come out with new clothing. Assos might go through 70 or 80 prototypes for a new model of shorts. Once the clothing is finalised, the final version is put in a glass cabinet known as the ‘fridge’ so that the product development team is not tempted to tinker with it further. Assos mainly tends to bring out a new clothing item having developed a new fabric or found a way to make the clothing fit even better than before. Where the clothing item is very popular and there is no improvement for it, Assos tends to keep making and selling it season after season (e.g. some pair of shorts do not change for several seasons). … In my experience people tend to think Assos is a bigger company than it is because of the power of the brand. In terms of numbers of employees Assos is a fairly small, family-owned company, but the ASSOS brand gives Assos a really strong advantage. Toni Maier told me someone once said to him: “Where are you in the pyramid? You’re not in the pyramid, you are on the point of the pyramid.”
“Article 51 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall be declared to be revoked … on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; … … 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.”
“The Court notes that in this respect, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers do employ the criterion of purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services.”
“20. … I do not think there is anything technical about this: the consumer is not expected to think in a pernickety way because the average consumer does not do so. In coming to a fair description the notional average consumer must, I think, be taken to know the purpose of the description. Otherwise they might choose something too narrow or too wide. … Thus the "fair description" is one which would be given in the context of trade mark protection. So one must assume that the average consumer is told that the mark will get absolute protection ("the umbra") for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods ("the penumbra"). A lot depends on the nature of the goods – are they specialist or of a more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made. 21. Moreover, trade marks do not normally vanish at the time of purchase. Labels are a constant reminder of the maker. An average consumer would bear this in mind in formulating a fair description. That is a particular answer to Mr Mellor's [that is counsel for the Defendant’s] suggestion that the fair description should be limited to the intended age of the purchaser. Today's girl surfer is tomorrow's wearer of elegant "Animale." 22. Thus I do not accept Mr Mellor's submission that the specification should be limited to exactly the kind (including "image") of goods for which use has been proved. It follows that I do not accept Mr Mellor's suggestion that the goods of the parties are so far distinct in commercial terms that there can be a sensible revocation confining "Animal" to "surf-type" goods. This would not be a meaningful distinction to most members of the public (including some of the witnesses). Nor does it make sense to try to limit the mark to younger adults. This is an exercise in pigeon holing which I do not think the ordinary consumer would undertake if asked to form, for trade mark purposes, a fair description of the goods for which the mark had been used. 23. So, should "clothing" in the specification be qualified in some other way? The term covers a very wide spectrum of different sorts of garments. But putting aside such specialist things as diving suits, wetsuits, bullet-proof vests and so on, there is a core of goods which are likely to be bought by ordinary consumers for different purposes in their daily wear. The same woman or girl is likely to own T-shirts, jeans, dresses, both formal and informal. Both parties' goods could easily end up in the same wardrobe or drawer. He or she knowing of the range of goods for which use has been proved would, I think, take "clothing" to be fair as a description. He or she might limit the clothing to "casual clothing" but I have concluded in the end that "clothing" is appropriately fair.”
“A. … the casual clothing was a seller, we were making profit on it, …. We have never ever had a year where we have not bought leisure casual clothing. We have made money from it. I have made money. Whether Assos has made or lost, I don't know. I have made money from the leisure clothing. I do not lose money. I mean, the good thing about Assos is that the collection normally lasts something like seven years, before you informed – you are only going to get 18 months' notice of a change. So, basically, you don't have to discount at the end of the year, you don't have to lose money on it. What does not sell this spring sells next spring. It is very good, from that point of view.”
“Nowadays we would sell more of these sorts of t-shirts and polo shirts as the ASSOS brand is really big. In addition we generally sell more standard t-shirts now than in the past: people interested in cycling will buy them if they are cycling themed, and tourists buy them as gifts”
“4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.”
“50 First, there was goodwill or reputation attached to the services offered by LMN in the mind of the relevant public by association with their get-up. In an action for passing off, that reputation must be established at the date on which the defendant began to offer his goods or services (Cadbury Schweppes v Pub Squash (1981) R.P.C. 429). 51 However, according to Article 8(4) of Regulation No 40/94 the relevant date is not that date, but the date on whichthe application for a Community trade mark was filed, since it requires that an applicant seeking a declaration of invalidity has acquired rights over its non-registered national mark before the date of filing, in this case11 March 2000 . … 96 It is true that there are difficulties in applying United Kingdom law on passing off in the context of an application for a declaration of invalidity pursuant to Article 52(1)(c) of Regulation No 40/94, as a result of the obligation laid down inArticle 8(4) of Regulation No 40/94 (see paragraph 51 above)to consider the situation as it was on the date on which theapplication for the Community trade mark was filed and not thedate on which the defendant in the passing off action began tooffer the goods and services at issue.”
“Article 9 Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;”
“As I have said in a number of judgments, the absence of evidence of actual confusion is not necessarily fatal to a claim under Article 9(1)(b). The longer the use complained of has gone on in parallel with the use of the trade mark without such evidence emerging, however, the more significant it is. In the present case over eight years have elapsed without any evidence emerging. In my judgment this is an important factor.” factor.”
“22 It is frequently said by trade mark lawyers that when the proprietor's mark and the defendant's sign have been used in the market place but no confusion has been caused, then there cannot exist a likelihood of confusion under Article 9.1(b) … So, no confusion in the market place means no infringement of the registered trade mark. This is, however, no more than a rule of thumb. It must be borne in mind that the provisions in the legislation relating to infringement are not simply reflective of what is happening in the market. It is possible to register a mark which is not being used. Infringement in such a case must involve considering notional use of the registered mark. In such a case there can be no confusion in practice, yet it is possible for there to be a finding of infringement. Similarly, even when the proprietor of a registered mark uses it, he may well not use it throughout the whole width of the registration or he may use it on a scale which is very small compared with the sector of trade in which the mark is registered and the alleged infringer's use may be very limited also. In the former situation, the court must consider notional use extended to the full width of the classification of goods or services. In the latter it must consider notional use on a scale where direct competition between the proprietor and the alleged infringer could take place. 23. This is of significance in this case because, as noted above, there is no suggestion that there has been any confusion in the market place between the activities of the Defendant under the sign “Compass Logistics” and the Claimant, or any other member of the Compass Group, under the mark "Compass". Mr Wyand relies on this as being a good indication that there is no likelihood of confusion. But in my view Mr Purvis is right when he argues that the question of infringement has to be answered by assessing the likelihood of confusion were the Claimant to use the mark “Compass" in a normal way in respect of all services covered by the registration, including for business consultancy services in the field of logistics, that is to say the same specialist field the Defendant operates in. 24. The test for likelihood of confusion has been considered in a number of ECJ decisions, including Sabel BV v Puma AG[1998] RPC 199 . The likelihood of confusion must be appreciated globally, taking account of all relevant factors. It must be judged through the eyes of the average consumer of the goods or services in question. That customer is to be taken to be reasonably well informed and reasonably circumspect and observant, but he may have to rely upon an imperfect picture or recollection of the marks. The court should factor in the recognition that the average consumer normally perceives a mark as a whole and does not analyse its various details. The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. Furthermore, if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion.”
“Nevertheless, it does not establish that the average consumer of the registered services who encounters the use of the sign BDO Remit in relation to remittance services in the context in which the Defendants have used it will think that the provider of the service is BDO LLP or an undertaking economically connected with it”
‘assos’; various garments preceded by the word ‘assos’; and ‘cycling shorts as’
“Although we need to retain the link with cycling, we are considering using some new sales channels, as well as our Pro Shops and Nucelo stores. … there can be drawbacks associated with selling clothes in a bike shop unless that bike shop has a good space dedicated to it, as our Pro Shops and Nucelo shops do. I am therefore thinking about selling the GTA range through Pro Shops and Nucelo, but also perhaps shops other than bike shops. I also believe online could be a good sales channel. I believe the presence of the ASOS brand could cause Assos difficulties in getting our message across, especially in the light of the crossover between cycling clothing and casual clothing and trends in the market…”
“1….The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (c) any sign which is identical with or similar to the Community trade mark [in relation to goods or services which are not similar to those for which the Community trade mark is registered], where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.”
‘76 Thirdly, as was stated on paragraph 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. 77 It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future. 78 It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.’
‘As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’
“189. It is a formal requirement of a case under s10(3)/Article 9(1)(c) that the Claimant proves its case on detriment. However, when considering 'dilution' (particularly a serious likelihood of dilution in the future) it is well-established that the Courts may proceed on the basis of obvious inferences from the facts of the case. In particular, it is not the case that the registered proprietor must bring evidence, in a dilution case, to show an actual change in the economic behaviour of customers. See the judgment of the General Court in Environmental Manufacturing v OHIM (Wolf Head) T-570/10: "52 Accordingly, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment (SPA-FINDERS, cited above in paragraph 26, paragraph 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (Case T-181/05 Citigroup andCitibank v OHIM - Citi (CITI)[2008] ECR II-669 , paragraph 78). "52 Accordingly, the proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of detriment (SPA-FINDERS, cited above in paragraph 26, paragraph 40). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (Case T-181/05 Citigroup andCitibank v OHIM - Citi (CITI)[2008] ECR II-669 , paragraph 78). 53 It cannot, however, be required that, in addition to those elements, the proprietor of the earlier mark must show an additional effect, caused by the introduction of the later mark, on the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered. Such a condition is not set out in Article 8(5) of Regulation No 207/2009 or in Intel Corporation, cited above in paragraph 27. 54 So far as concerns paragraph 77 of Intel Corporation, cited above in paragraph 27, it is apparent from the choice of words 'it follows' and from the structure of paragraph 81 of that judgment that the change in the economic behaviour of the consumer, to which the applicant refers in support of its claim, is established if the proprietor of the earlier mark has shown, in accordance with paragraph 76 of Intel Corporation, that the mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark."”
“A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: his own name or address; [......] Provided he uses them in accordance with honest practices in industrial or commercial matters.”
“This was because Asos owned the domain name asos.com and nothing came up when I searched the internet for the name Asos. Furthermore, at no point prior to or during the change of name process did Asos’ then lawyers advise us to conduct trade mark searches. Asos had not heard of the Claimants until they opposed Asos’ Community trade mark application in around April 2006.”
“Suppose the defendant at the time believes that what he is doing will not cause substantial deception or confusion and will not amount to unfair competition but is shown to have been wrong. There is no doubt that he must stop once he knows that.” that.”
“I conclude … that a man may use his own name even if there is some actual confusion with a registered trade mark. The amount of confusion which can be tolerated is a question of degree – only if objectively what he does, in all the circumstances, amounts to unfair competition, will there also be infringement. In practice there would have to be significant actual deception – mere possibilities of confusion, especially where ameliorated by other surrounding circumstances (mere aural confusion but clearly different bottles) can be within honest practices. No doubt in some cases where a man has set out to cause confusion by using his name he will be outside the defence (cf. the English passing off cases cited above) – in others he may be within it if he has taken reasonable precautions to reduce confusion. All will turn on the overall circumstances of the case.. ”
“However, as this case progressed our General Counsel spoke to the senior management of our product, womenswear and menswear teams (I do not know the exact date and neither does he) to ask them to ensure that Asos did not sell any products relating to cycling on the Asos Website, as the legal team believed this may cause concern to the Claimants. By products relating to cycling I mean cycling inspired fashion. Any products that were sold on the Asos Website that referenced cycling would have been described as such due to an industry standard description (for example, referring to the length of short) or relating to a particular fashion trend, as I describe above. I understand from the head of Asos’ womenswear buying team that the products above which were described as ASOS Basic Cycling Shorts (Black and Grey) and ASOS Cycling Shorts in Neon Lace were renamed on the Asos Website as ASOS Basic Legging Shorts and ASOS Fitted Shorts in Neon Lace respectively. Those products were not specifically aimed at cyclists previously and are not now. This was done at the suggestion of the Asos legal team because we understood that the Claimants might be concerned about these descriptions given their business in cycling wear. In 2012 Asos also tried to stop descriptions of products being put on the Asos Website that referred to cycling although as there is such a large number of products being put on the Asos Website each week (by a large number of often junior people) it was not possible to ensure that this was completely successful. In particular, it was challenging to prevent products referencing cycling being sold as the products Asos sells are not products aimed at cyclists that are categorised as such. The products sold by Asos would encompass items such as an item of clothing with a picture of a bicycle on it. Finally, more recently, in mid-March 2013, the Asos legal team instructed the e-commerce team that a restriction should be put in place so that any user of the Asos Website searching onsite for ‘cycling’, ‘cycling shorts’, ‘cycling plimsolls’ or ‘cycle’ would be immediately redirected to the home page of the Asos website. If a user therefore wanted to find a product such as a motorcycle jacket they would have to either look through every product on the Asos Website to find it or search for the specific term “motorcycle”
“A business cannot be expected to drop everything and change the basis of its trade (its name and brand) and throw away all the investment and goodwill it has built up (quite legitimately and honestly) simply because another company opposes its application to register a trade mark. Particularly where no actual confusion or deception is even alleged, still less proved.”
“90. Common features. When a user of the Google search engine carries out a search, the SERP [search engine result page] presented to the user usually contains three main elements. The first is the search box, which displays the search term typed in by the user. This may consist of one or more than one word. The second element comprises the "natural" or "organic" results of the search, consisting of links to websites assessed to be relevant to the search term by the search engine's algorithm, accompanied in each case by some text derived from the website in which the search term appears, sorted in order of relevance. Typically, there is a large number of natural results, the listing of which continues on succeeding pages. Although there are various ways in which website operators can and do seek to influence their position in the "natural" search results, a process known as "search engine optimisation" or SEO, in principle the ranking is an objective one based solely on relevance. The third element comprises advertisements containing links to websites which are displayed because the operators of those websites have paid for them to appear in response to the search term in question. The advertisements are generally displayed in one or more of three sections of the SERP, namely (i) in a shaded box at the top of the SERP (often referred to as the "golden box") which contains up to three advertisements, (ii) in a panel on the right-hand side of the SERP and (iii) a panel at the bottom of the SERP after the first ten natural results. 91. The display of such advertisements is triggered when the user enters one or more particular words into the search engine. These words, which are referred to as keywords, are selected by the advertiser in return for the payment of a fee calculated in the manner described below. This is often referred to as "bidding on" or "purchasing" the keywords. … 93. The way in which the advertiser pays for this form of advertising is that the advertiser pays a certain amount each time a user clicks on the hyperlink in its advertisement and thus is directed to the advertiser's website (known as "click through"). Accordingly, the advertiser does not pay for the display of advertisements to users who do not click through. The amount the advertiser pays is calculated as the "cost per click" or CPC for each keyword purchased subject to a maximum daily limit specified by the advertiser. If the daily limit is exceeded, the advertisement will not be displayed. 94. More than one person can purchase each keyword. Where more than one person purchases a particular keyword, there is an automated auction process whereby, subject to the influence of the Quality Score discussed below, the advertiser who bids the highest maximum CPC has its advertisement displayed in the highest position and so on. This means that popular keywords are more expensive than unpopular ones. 95. In addition to the CPC, the positioning of advertisements is influenced by the Quality Score or QS which Google ascribes to the advertisement. Google does not publish all the factors it takes into account in determining the QS, and I believe that this has changed over time, but they include the relevance of the promotional text, the "click through rate" or CTR and the relevance of the landing page. An advertiser whose advertisement has a high QS, but low maximum CPC, can appear higher in the ranking than one whose advertisement has a lower QS but higher maximum CPC.”
"There is no dispute as to the applicable law. The question is whether the mark Neutralia (used for shampoos and skincare products) so nearly resembles the mark Neutrogena as to be likely to deceive or cause confusion. ... There is in this case no real difference between deception and confusion – if people think Neutralia is connected with the Neutrogena people, or mistake one for the other, or in other ways mix one with another that is enough. Another way of putting the question is to ask whether the goodwill of Neutrogena is damaged by any form of misrepresentation caused by Neutralia. It is, of course, the effect on the goodwill of Neutrogena which matters. It is not a defence to passing off that many of a defendant's sales do not cause deception or confusion. There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By "enough"