In its recent decision in Roger Maier and Assos of Switzerland SA v ASOS Plc and ASOS.com Limited, the English Court of Appeal considered the so-called ‘own name defence’ provided by Article 12 of the Community Trade Mark Regulation (which mirrors section 11(2)(a) of the Trade Marks Act, 1994).
This provision says that an otherwise infringing act cannot be prevented by enforcement of a trade mark right where the ‘infringer’ is using his own name – provided he uses it in accordance with honest practices in industrial or commercial matters.
Where the ‘infringer’ is a natural person the situation is fairly straightforward; he is entitled to use his own name to identify his business. However, even this ‘right’ is curtailed somewhat by the requirement that he uses it in accordance with honest practices. An individual named Walter Henry Smith may be entitled to run a stationery outlet under the name Walter Smith but would almost certainly be held to infringe if he were to adopt the trading style W H Smith – because to do so now would be a rather dishonest attempt to profit from the reputation of the well-known high street chain. The concept of honest practice overrrules any factual situation regarding ‘ownership’ of the name.
For a company, the situation is less clear because a company is not given a name by its parents but chooses its name and so has control of its own destiny. Choosing a corporate name which is closely similar to a third party trade mark may simply be a mischance but the law recognizes the possibility of a deliberate attempt to hijack a well-known trade mark.
This question arose in the recent case – the trade marks in issue were ASSOS, the registered mark, and ASOS, the later, potentially infringing, mark. The defendant asserted that it was saved from infringement by the fact that it was using its own name (a name it had adopted shortly after the claimant had applied to register ASSOS) and the judges of the Court of Appeal agreed, although not, it has to be said, unanimously.
The court looked closely at the defendant’s conduct both before and after the proceedings had commenced. On the one hand, the company name and the mark ASOS had clearly been derived from an earlier corporate name, As Seen On Screen, without knowledge of the mark ASSOS, there was nothing to suggest ASOS had been chosen dishonestly and, after the proceedings had begun, it was clear that the defendant had taken steps to exclude certain goods from its website so as to minimize the risk of confusion with the claimant’s ASSOS goods. On the other hand, the defendant had not taken any effective steps to check whether it was free to adopt the trade mark ASOS without infringing third party rights (- and ignorance is no defence!).
It is not clear whether the lack of proper clearance checks before use of ASOS began was attributable to the fact that the new mark was derived from something which had been in use for some time without problem but, of course, abbreviations and acronyms can create marks which may be so removed from their original forms that they conflict with third party marks which have coexisted quite comfortably with the originals from which they are derived.
In this case, it also seems that the corporate name change predated adoption of ASOS as a trade mark; the outcome might perhaps have been different if there had been an ex post facto name change to include a trade mark already in use.
The Court of Appeal decision is itself open to appeal and may yet be overturned but, for the moment, the own name defence for corporate bodies can still be effective in the right circumstances.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.