Bird & Bird is representing Assos, the Swiss company responsible for the first ever lycra cycling shorts, in a Court of Appeal (CoA) case against online retailer ASOS.
Assos lost a passing off and trademark infringement claim earlier this year to Dechert client ASOS, who succeeded in bringing a counterclaim against the Swiss company resulting in a partial revocation of Assos’ mark.
In February Mrs Justice Rose threw out Assos’ challenge to the ASOS trademark after ruling that there was no likelihood of the two brands being confused or Assos’ brand being diluted by ASOS. It is this claim which Assos is now contesting.
Assos turned to Bird & Bird partner Peter Brownlow to bring the claim in the High Court and has retained him for the Court of Appeal hearing today (26 November), where it will contest the High Court ruling. Brownlow has instructed Hogarth Chambers’ Roger Wyand QC.
Respondent ASOS has again turned to Dechert partner Paul Kavanagh and associate Nathan Smith, who has instructed 8 New Square silk Daniel Alexander QC for the battle.
In the 2013 judgment, the cycling brand’s use of trademarks within the brackets of soaps, cosmetics and perfumery, vehicles and clothing article for sport were all restricted to cycling-based products and Assos’ passing off claim was dismissed.
The final challenge to ASOS’ trademark was put aside for conclusion by Rose J and in February she dismissed Assos’ claim. She said: “I therefore find that the ASOS UK mark would not take undue advantage of or be detrimental to the distinctive character or repute of Assos’ CTM.”
But the Swiss company is unhappy with the ruling and determined to reverse it at the CoA. The Swiss company and its CEO Roger Maier first launched a raft of claims against ASOS in 2013. Maier is the son of Assos founder Anton Maier, who set up the cycling clothing company in 1970 and produced the first ever pair of lyrca cycling shorts, departing from the traditional woollen shorts worn at the time.
Among other things, Assos argued that the ubiquitous coverage of ASOS’ brand was detrimental to the distinctive nature of its own brand.
However the court disagreed. Rose J said: “In this case there is no evidence that unequivocally shows that a customer has seen an ASOS garment and thought it was an Assos garment.”
The legal line up
For the appellant (1) Roger Maier (2) Assos of Switzerland
Hogarth Chambers’ Roger Wyand QC instructed by Bird & Bird partner Peter Brownlow
For the respondent (1) ASOS Plc (2) ASOS.com ltd
8 New Square Chambers’ Daniel Alexander QC instructed by Dechert partner Paul Kavanagh and associate Nathan Smith