Online fashion and beauty retailer Asos, previously known as As Seen On Screen, is paying over £20 million to cycle wear manufacturer Assos of Switzerland and German menswear retailer, Anson's Herrenhaus, to settle ongoing trade mark disputes between the companies.
From a UK perspective, it might seem surprising that Asos is making such a payment, which amounts to approximately 30% of the retailer's latest reported annual continuing profits before tax and exceptional items, being £63.7 million to 31 August 2016. In this jurisdiction, just 18 months ago, Asos successfully defended an infringement action brought by Assos.
The Guardian reports, however, that Asos was also dealing with cases in the US, Germany and France. The settlement is a full, final and global one covering all outstanding litigation and trade mark registry actions.
The Telegraph reports other details from the settlement. Asos will be entitled to sell Asos-branded sportswear, although not cycle wear. The Guardian adds that Asos will not be allowed to open shops in Germany. This may not be much of a limitation in practice: to date, Asos' physical store presence has been very limited, for example in Australia in 2012 the retailer launched pop up stores to promote a country-specific range. Being able to sell own-brand sportswear, on the other hand, could be valuable. The sportswear market in the UK alone is valued at around £6 billion a year.
Second, even in the UK, Asos may have felt vulnerable to further allegations of trade mark infringement, despite the Court of Appeal judgment in its favour. Asos won the UK action on the basis of the own name defence, which provides that an EU trade mark owner cannot prevent a third party from using his own name or address in the course of trade, provided that he uses them in accordance with honest practices in industrial or commercial matters.
Since the decision, however, amendments to the EU Trade Mark Regulation have taken effect. One of the changes is that companies can no longer benefit from the own name defence; it is now only available to natural persons. It is an open question as to how this will affect corporate defendants who have built up brands in reliance on the defence, prior to the change, but on the face of it there must have been at least a risk of a fresh action against Asos now that its defence has fallen away.
It appears that Asos has decided that the certainty that it could achieve via settlement was worth the significant short-term financial hit, particularly perhaps with Assos of Switzerland due any day to launch its first shop in the UK - a flagship "experience concept" store in central London.
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