Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited was decided earlier today by the Court of Appeal, England and Wales. You can read the decision in full at [2015] EWCA Civ 220 but beware -- it's a very, very long one. In short, Assos, the Swiss high-end cycling company, had sued Asos for trade mark infringement, claiming that consumers would be likely to be confused by their brands. Assos lost its case in the High Court in 2013 when the court concluded that there was no likelihoood of confusion. On appeal today that finding was rejected but Asos still one, on the controversial ground that it had an "own name" defence.  According to Tom Carl (senior associate with MARQUES member Taylor Wessing):

 "By a majority of two to one, the Lord Justices decided the High Court had not given enough weight to ASSOS's trade mark rights, and that there was a technical risk of confusion and dilution between the brands.  In usual circumstances, the Court would therefore normally conclude there was an infringement.  However, they held this was an "unusual case" in which ASOS had a valid defence because they had been using their own company name -- ASOS – in an honest way as a brand for many years, in parallel to ASSOS without any actual confusion.

The dissenting Lord Justice thinks this case takes the 'own name' defence too far and does not give sufficient weight to ASSOS's trade mark rights.  In particular, he thought ASOS should have been alerted to ASSOS's earlier rights, by doing reasonable checks when they adopted their brand.  ASSOS has said it intends to seek leave to appeal to the Supreme Court – so this dispute is not necessarily over yet."