Asos Supreme- what will a change in the law mean?

11 August 2015. Published by David Cran, Partner, Head of IP & Tech

Earlier in April, we wrote an article on the Court of Appeal decision in the Assos v Asos trade mark dispute.

Since then there have been two interesting developments which impact on the Court of Appeal's decision. Firstly, the Supreme Court has refused permission to appeal the Court of Appeal decision, and secondly, the European Commission has set out plans to change the law so that the own name defence will no longer apply to corporations.

The Supreme Court has refused permission to appeal the Court of Appeal decision

The reason given by the Supreme Court for refusing permission to appeal was that "the application does not raise an arguable point of law of general public importance. The relevant principles are not in issue, only their application to the facts of the case".

This means that the majority decision of the Court of Appeal - that Asos could rely on the 'own name defence'  to permit it to continue to use ASOS without infringing Assos' Community Trade Mark ASSOS - is not susceptible to further challenge in the English Courts.

The 'own name defence' – proposals to change in the law

The own name defence provides that a proprietor of a trade mark shall not be entitled to prohibit a third party from using his own name in the course of trade in accordance with honest commercial practices.

On 19 June the European Commission published a draft text of a regulation to amend the Community Trade Mark Regulation (CTMR) entitled "Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community Trade Mark ". Paragraph 14 of the draft text amends Article 12 of the CTMR so that, once implemented, the own name defence will only apply to natural persons (and so won't be available to companies, such as Asos, in the future).

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