Asos spends over £20 million in global settlement to end trade mark infringement claims

The e-commerce retailer Asos– formerly known as “As Seen On Screen” has agreed to pay out a total sum of £20.2 million to settle various trade mark infringement claims by Assos of Switzerland, a high-performance cycle wear manufacturer and German menswear retailer Anson’s Herrenhaus – known as Anson’s.

Asos has said that it has agreed to pay the global settlement sum to settle all disputes with both Assos and Anson Herrenhaus in order to “secure a comprehensive co-existence for all parties.” Asos’ Chief Executive, Nick Beighton, said: “We are pleased to have put this litigation behind us. Entering into this settlement at this juncture is the right commercial decision for our business”.

The various disputes begun as long ago as 2010 and have spanned a variety of different countries including the UK, USA and Germany. As part of the agreement Asos will be able to offer its own sportswear range for sale, but cannot sell Asos- branded cycling clothing.

The sum paid is a remarkable figure, particularly when it is considered in the context of the Court of Appeal judgement given in April 2015 in the action brought by Assos against Asos. Here, whilst the Court of Appeal found that Asos’ use of the brand caused a likelihood of confusion and damage to the distinctive character of Assos’ registered trade mark by Asos’,the Court held in a 2:1 majority that the “own name” defence claimed by Asos applied to Assos’ claim for trade mark infringement.

Briffa comment

It is essential that new and existing businesses looking to build a brand recognise the importance of carrying out appropriate trade mark clearance searches before starting to use a new mark. It may have been possible to avoid the numerous disputes, court cases and subsequent multi-million pound settlement if Asos had considered existing marks on the trade mark registers properly before adopting and registering “Asos” for use.

Briffa advises on all areas of intellectual property law include carrying out of clearance searches, registration of trade mark’s, trade mark infringement and passing off.

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