Source: All England Reporter
Publisher Citation: [2015] All ER (D) 23 (Apr)
Neutral Citation: [2015] EWCA Civ 220
Court: Court of Appeal, Civil Division
Judge:

Lord Justice Kitchin, Lord Justice Underhill and Lord Justice Sales

Representation Roger Wyand QC and Benet Brandreth (instructed by Bird & Bird) for Assos.
  Daniel Alexander QC and Andrew Lykiardopoulos QC (instructed by Dechert LLP) for Asos.
Judgment Dates: 1 April 2015

Catchwords

Trade mark - Infringement - Name - Claimants Assos being owner of Community trade mark (CTM) for word ASSOS - Assos selling cycling clothing through specialist retailers - Defendants Assos being owner of United Kingdom trademark for word ASOS - Assos being on-line fashion retailer - Assos claiming Asos infringing CTM - Assos claiming UK trademark being invalid - Whether judge fallen into error in restricting specification of CTM - Whether judge being wrong to reject claim for infringement under EU law - Whether Asos having defence in respect of activities complained of - Whether judge ought to have made declaration of invalidity of UK trade mark - Council Regulation (EC) 207/2009, regs 9(1)(b), 9(1)(c), 12(a).

The Case

Trade mark Infringement. The proceedings concerned Community trade mark number 4580767 for the words ASSOS which was owned and used by the claimants (together Assos) and United Kingdom trade mark number 2530115 for the word ASOS which was owned and used by the defendants (together Asos). The Court of Appeal, Civil Division, held, among other things, that Assos' appeal in relation to the attack upon the validity of the UK registration would be allowed and the registration declared to be invalid to the extent indicated.

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