Retail giant wins trade mark fight

Posted: 24th September 2013

CyclistPhenomenally successful online fashion retailer ASOS plc has fought off a bid to make it change its name by top-end cycling clothes manufacturer Assos of Switzerland S.A.

The Court noted that it was unlikely that the public would confuse ASOS’s garments, which are targeted at ‘cool, fashionable, on-trend 20-somethings’, and Assos's costly cycle-wear, including sleek bib shorts and skin-tight bodysuits which no-one would expect to wear walking down the street without heads turning.

Assos has been trading since the 1970s and is famed for having produced the first pair of the now ubiquitous Lycra cycling shorts. Establishing a £14 million turnover with the world's cycling elite - the word 'assos' means 'the best' in Greek – the company sells its shorts for about £200 and its other products cost more.

Providing technical clothing to various national cycling teams, including the Russian cycling federation, Assos has clothed more than 250 gold medal winning cyclists in the Olympics and other international championships since the mid-1970s. However, it is a relative corporate minnow compared with ASOS which, since the late 1990s, has established a massive Internet presence, boasts almost 14 million customers and, in 2012, achieved a turnover of almost £500 million.

Assos had accused ASOS of infringing its community trade mark, passing off and creating public confusion on such a scale that it threatened to ‘swamp’ its goodwill. However, the Court noted that the history of the two companies could hardly be more different, with ASOS - an acronym for 'As Seen on Screen' - taking its inspiration from celebrities and Assos focused on the elite end of the cycling world.

ASOS had never marketed technical cycling gear and, although Assos also sold a range of branded casual wear and toiletry products, its goodwill was rooted in its reputation as a maker of premium cycling apparel. Assos had, amongst other things, put forward evidence in the form of market surveys and statistics from Google, but the Court found that it had failed to establish any 'actual confusion' between the two brands in the minds of average consumers.

Dismissing Assos's claims, the Court observed that ASOS had, 'albeit belatedly', taken appropriate precautionary steps to guard against public confusion by, amongst other things, ensuring that it does not promote goods bearing the ASOS name that directly relate to cycling.