From a UK perspective, it might seem surprising that the Asos trademark dispute ended in the online retailer making such a payment?? it?amounts to approximately 30?per cent?of its latest reported annual continuing profits before tax and exceptional items, being ?63.7m to 31 August 2016. In this jurisdiction, just 18 months ago, Asos successfully defended an infringement action brought by Assos. The Guardian reported, however, that Asos was also dealing with cases in the US, Germany and France. The settlement is a full, final and global one covering all outstanding litigation and trademark registry actions. Further details from the settlement was reported by The Telegraph. Asos will be entitled to sell own-branded sportswear, although not cycle wear. And the Guardian added that Asos will not be allowed to open shops in Germany. This may not be much of a limitation in practice: to date, Its?physical store presence has been very limited, for example in Australia in 2012 the retailer launched pop-up stores to promote a country-specific range. Being able to sell own-brand sportswear, on the other hand, could be valuable. The sportswear market in the UK alone is valued at around ?6bn a year. Second, even in the UK, the Asos trademark dispute may have?made the retailer feel?vulnerable to further allegations of trademark infringement, despite the Court of Appeal judgment in its favour. Asos won the UK action on the basis of the own name defence, which provides that an EU trademark owner cannot prevent a third party from using his own name or address in the course of trade, provided that he uses them in accordance with honest practices in industrial or commercial matters. Since the decision, however, amendments to the EU Trade Mark Regulation have taken effect. One of the changes is that companies can no longer benefit from the own name defence; it is now only available to natural persons. It is an open question as to how this will affect corporate defendants who have built up brands in reliance on the defence, prior to the change, but on the face of it there must have been at least a risk of a fresh action against Asos now that its defence has fallen away. It appears that Asos has decided that the certainty that it could achieve via settlement was worth the significant short-term financial hit, particularly perhaps with Assos of Switzerland due any day to launch its first shop in the UK ??a flagship “experience concept” store in central London. Alice Stagg is a principal associate at Gowling WLG.
We use cookies on our website to give you the most relevant experience by remembering your preferences and repeat visits. By clicking “Accept”, you consent to the use of ALL the cookies.
This website uses cookies to improve your experience while you navigate through the website. Out of these cookies, the cookies that are categorized as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. We also use third-party cookies that help us analyze and understand how you use this website. These cookies will be stored in your browser only with your consent. You also have the option to opt-out of these cookies. But opting out of some of these cookies may have an effect on your browsing experience.
Necessary cookies are absolutely essential for the website to function properly. This category only includes cookies that ensures basic functionalities and security features of the website. These cookies do not store any personal information.
Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. It is mandatory to procure user consent prior to running these cookies on your website.