General Court rules in Asos v Assos

In Asos plc v OHIM, Roger Maier (Case T647/11) the owners of ASOS and ASSOS went head to head, with the latter having opposed the Community trade mark application of the former. Both parties have been locked in litigation before the English courtsThe basis of the opposition was a Swiss trade mark application predating Asos’ CTM application by a mere 16 days. The Opposition Division at OHIM initially upheld the opposition in relation to all goods and services in Classes 3, 25 and 35 and some goods in Class 18 on the basis of a likelihood of confusion arising between the two marks.

Asos appealed to the Board of Appeal, which agreed that the Class 18 goods were not similar to the opponent’s goods and overturned this part of the first instance decision. However, the Board of Appeal rejected Asos’ arguments of peaceful coexistence and upheld the decision in relation to goods and services under Classes 3, 25 and 35.

Both parties then appealed to the General Court, with Asos seeking protection in Classes 3, 25 and 35 and Roger Maier seeking protection in Class 18. The General Court, however, refused to depart from the Board of Appeal’s decision. It rejected Asos’ argument that its word mark would be perceived as an abbreviation for “As Seen On Screen” and that no likelihood of confusion would arise as a result, explaining that the majority of the public would not be aware of this and that the likelihood of confusion would not therefore be mitigated in any meaningful way.

In relation to Roger Maier’s argument as to the goods in Class 18, the General Court upheld the Board of Appeal’s decision, reasoning that goods in Class 18 are not complimentary to those in Class 25. It further explained that there would not be a likelihood of confusion even if those goods were distributed through the same channels.

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