How to assess ASSOS: General Court tells all

Case T 647/11 Asos plc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Roger Maier, a decision of the General Court of the European Union (Seventh Chamber) this past Tuesday, is just one piece in a rather larger jigsaw of interlocking litigation between two assertive brand owners. It's also another sad testament to the dreadfully long time that it seems to take from cradle to grave, as it were, for a Community trade mark application.

The Cat's Whiskers: iconic timepiece
from the Asos.com website, here

Way back in 2005 Asos applied to register the word ASOS as a Community trade mark (CTM) for a range of goods in Classes 3, 18 and 25 and services in Class 35. The goods in Class 18 included ‘articles of leather and imitations of leather; bags; handbags; shoulder bags; bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses; belts; parts and fittings for all the aforesaid goods’.  Maier opposed, basing the opposition on his later Community word mark ASSOS, which had the good fortune to be able to enjoy the priority of a Swiss trade mark application filed on 14 June 2005, just 16 days ahead of Asos's effort. The earlier mark was for ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’ (Class 3), ‘vehicles; apparatus for locomotion by land, air or water’ (Class 12) and ‘clothing, footwear, headgear’ (Class 25). According to Maier, consumers were likely to be confused, given the similarity of the respective marks and the identity or similarity of their goods and services.

Slow-forward to October 2010. That's when the Opposition Division partially upheld the opposition. Yes, it said, there was a likelihood of confusion with regard to all the goods and services in Classes 3, 25 and 35 and also with regard to the following goods in Class 18: ‘articles of leather and imitations of leather; bags; handbags; shoulder bags; bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses; belts; parts and fittings for all the aforesaid goods’.

Asos appealed more or less immediately and, just one year later, in October 2011, got some joy from OHIM's Fourth Board of Appeal. The Board found that the relevant public was the general public in the European Union, deemed to be reasonably well informed and reasonably observant and circumspect [except, says Merpel, when it comes to election time]. Comparing the goods and services, the Board of Appeal held, contrary to the Opposition Division, that ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 were not similar to the goods covered by Maier’s earlier mark.

Good news: no Kats were used in the manufacture of this product ...

Comparing the marks, while Asos's goods in Class 18 (‘articles of leather and imitations of leather; bags; handbags; shoulder bags; belts; parts and fittings for all the aforesaid goods’) were similar to the goods covered by the earlier mark, the Board of Appeal, taking account of the fact that those signs shared the letters ‘a’, ‘s’, ‘o’ and ‘s’ and differed only in the additional letter ‘s’ in the earlier mark -- and of the fact that that additional letter ‘s’ is hardly audible in many [is it truly audible in any?] of the languages of the European Union -- held that ASOS and ASSOS were very similar both visually and phonetically; in conceptual terms their comparison was neutral in so far as neither of those marks had any meaning for the majority of the relevant public. Overall, having regard to the average distinctiveness of the earlier mark and the high degree of visual and phonetic similarity between the signs, there was a likelihood of confusion in respect of the identical and similar goods. Additionally, the Board noted, Asos had not succeeded in proving that the marks at issue coexisted peacefully within the territory of the European Union [This Kat likes the idea of peaceful coexistence. In his book, the relationship of peaceful coexistence to negotiated coexistence agreements is broadly the same as that of living together when compared with marriage ...]. 

There was now a general appealfest.  Asos applied to the General Court to have the decision of the Board of Appeal annulled in so far as it refused registration of the mark for which it had sought protection, while Maier applied to have the decision of the Board of Appeal amended in so far as it found that there was no likelihood of confusion in respect of the goods listed in Class 18.

Without actually saying "A plague on both your houses", the General Court dismissed both sides' pleas. Its reasoning was based on, among other things, the following considerations:

Assessment of the conceptual element of the ASOS mark

Asos submitted that the Board of Appeal failed to take into account the correct conceptual meaning of the ASOS mark in its global assessment of the likelihood of confusion on the ground that a significant portion of the relevant public will perceive the trade mark applied for, ASOS, as the acronym for ‘as seen on screen’, on the ground that it was the largest independent online retailer of fashion articles and beauty products in the UK and enjoyed extremely high sales throughout the EU. No, said the court.  Admittedly, one portion of the English-speaking public will perceive the word ASOS as the acronym for ‘as seen on screen’ and, for that portion of the public, ASOS and ASSOS are conceptually different. However, the other portion of the English-speaking public will not regard ASOS as the acronym for ‘as seen on screen’. Further, given that it is common ground that the relevant public is the public throughout the EU, the relevant public does not consist solely of an English-speaking public. The word element ‘asos’ is not a known acronym and the expression ‘as seen on screen’ is not a basic English expression, likely to be understood by the non-Anglophone public. For the majority of the relevant public, therefore, neither of the signs at issue has a meaning and the conceptual comparison is neutral, as the Board of Appeal observed.

Evidence of peaceful coexistence

The Yeti, like peaceful coexistence, "cannot
be entirely ruled out" ...

Asos maintained that it had demonstrated the peaceful coexistence of the ASOS and ASSOS marks in 18 EU Member States and that the Board of Appeal ought to have taken this into account. No, again, said the court: it cannot be entirely ruled out that, in certain cases, the peaceful coexistence of marks on the market could reduce the likelihood of confusion found by the decision-making bodies of OHIM to exist ["Cannot be entirely ruled out"? This is the sort of language one expects when discussing the existence of the Yeti or Bigfoot]. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the party applying for the Community trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion, on condition that the earlier marks concerned and the marks at issue are identical [Does anyone know why they have to be identical?  This looks an arbitrary criterion and an unnecessary restriction in terms of protecting trade mark owners, their competitors and the consumer]. The Board of Appeal concluded that the items of evidence provided by Asos, consisting of two declarations from the head of its legal department, should be [rightly] rejected, since they emanated from Asos itself and were not supported by any additional information originating from independent sources. That finding by the Board of Appeal must be upheld since a declaration originating from the applicant cannot be attributed probative value unless it is corroborated by other items of evidence.

This evidence was ineffective anyway. It did not permit any conclusion to be drawn as to the absence of a likelihood of confusion since it related only to the use of the ASOS trade mark and did not address the manner in which the relevant public was exposed to the ASOS and ASSOS marks together on the same market. What's more, it only addressed the position in 18 EU Member States.

Comparison of goods in Class 18

Finally, the Board of Appeal was right to find that the ‘bumbags; sports bags; casual bags; briefcases; attaché cases; satchels; beauty cases; credit card cases and holders; wallets; purses’ in Class 18 — in contrast with the ‘clothing, footwear, headgear’ in Class 25, which had an aesthetic function — essentially had a practical function, namely that of containing sports equipment, documents, banknotes and coins. Bumbags etc had no aesthetic function and apparently, according to the General Court which obviously knows about these things, are not included in the marketing strategy for fashion accessories. The parties' goods were not complementary and it was unlikely that, when buying a briefcase or a wallet, the purchaser would be asked about the colour of the suits or shoes normally worn or, when buying a sports bag, the colour of his tracksuit. Even if the respective goods had the same distribution channels and the same end users, that would not mean that there was a similarity between them.

Will this be an end to the matter? Asos and Assos have been engaged in some vigorous litigation in England and Wales, where each of them has obtained a measure of satisfaction from the three judgments so far (here, here and here).

Of interest to this Kat was the comments of the General Court concerning the evidential value of litigation before national courts (in this case in England and Wales). Said the court at [17] to [19]:

17 On 21 December 2012, the intervener provided the General Court with a copy of a decision of the High Court of Justice (England & Wales), Chancery Division, of 23 November 2012, as evidence of the existence of a likelihood of confusion. On 8 November 2013, the applicant provided the General Court with a copy of a decision of the High Court of Justice (England & Wales), Chancery Division, of 19 September 2013, as evidence of the absence of any likelihood of confusion.

18 Those decisions, although produced for the first time before the General Court, are not strictly evidence but relate to national case-law, to which, even after the procedure before OHIM is complete, a party has the right to refer ...  Neither the parties nor the General Court itself can be precluded from drawing on national case-law for the purposes of interpreting EU law. That possibility of referring to national decisions is not covered by the case-law according to which the action before the Court seeks review of the legality of decisions of the Boards of Appeal in the light of the evidence submitted by the parties before the latter, where the purpose is not to criticise the Boards of Appeal on the ground that they failed to take the factual aspects of a specific national decision into account, but rather to cite decisions in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 ...

19 It follows that the decisions of the High Court of Justice (England & Wales), Chancery Division, provided by the intervener and the applicant are admissible.

As it turns out, they had no probative value -- but that's another matter.

Fashionable bumbags here
Cheap and cheerful bumbags here