The Claimants brought trade mark infringement proceedings against ASOS plc in respect of the use of ASOS by the Defendants on its clothing retail website, www.asos.com, as well as on own brand clothing. The Defendants argued there was no infringement and relied on a number of defences including the "own name" defence.

The Court of Appeal has decided the use of the brand "ASOS" by the Defendants created a likelihood of confusion and damaged the distinctive character of the ASSOS registered trade mark. However, by a majority of two to one, Court of Appeal held that the Defendants could rely on the "own name" defence to trade mark infringement, in relation to which the majority found a number of factors to be relevant, including:

  • the name "asos" had been adopted innocently by the Defendants, as it was an acronym of their previous name "As Seen on Screen" and it was never their intention to confuse the public;
  • when adopting the brand, the Defendants had done a Google search for "asos" but had not conducted any trade mark searches;
  • there had been no significant evidence of "actual confusion".

The Lord Justices decided that, on balance, the Defendants had fulfilled their duty to act fairly in relation to the Claimants' legitimate interests, and had not conducted their business so as to compete unfairly with the Claimants.

In a detailed dissenting judgment, Lord Justice Sales disagreed with the application of the "own name" defence in favour of ASOS, because in his view greater weight should be given to the rights of the trade mark owner and the protection of the interests of the relevant public. He also placed particular weight on the fact that the Defendants had not conducted reasonable checks whether ASOS was already being used by a third party to market the same type of goods.