The Court of Appeal has handed down a further judgment in the Assos v Asos own name dispute.
As readers of our earlier alert will recall, the Court of Appeal (with Sales LJ dissenting) held that while Asos' use of the mark ASOS infringed Assos' Community Trade Mark (CTM) for ASSOS, Asos could avail itself of the own name defence.
In this judgment the Court of Appeal has refused Assos its request for permission to appeal to the Supreme Court and has rejected invitations from the parties to refer various questions of law to the Court of Justice of the European Union (CJEU). The Court of Appeal has also dealt brusquely with late-stage requests for undertakings and declarations by both parties which were not included in their original pleadings.
Permission to appeal refused
The Court of Appeal's 1 April 2015 decision addressed fundamental principles going to the heart of trade mark law. The members of the Court were agreed that Assos' claim for infringement under Article 9(1)(b) of the Community Trade Mark Regulation (the Regulation) was made out. But there was disagreement as to whether Assos' specification should be limited to particularised types of specialist clothing for cyclists.
More significantly, the Court of Appeal was split as to whether Asos was entitled to rely upon the own name defence. The majority (Lord Justice Kitchin and Lord Justice Underhill) decided that Asos was entitled to rely upon the defence. Lord Justice Sales dissented. In Sales LJ's view, when applying the "honest practices" standard required by the defence, the interests of the CTM proprietor should be given significantly more weight than Kitchin LJ or Underhill LJ had afforded them. More detail is provided in our report "It's my name".
Assos sought permission to appeal. On 22 April 2015, the Court of Appeal refused the permission sought. Lord Justice Kitchin explained that in reaching the 1 April 2015 decision, each member of the Court of Appeal had carried out the necessary evaluative exercise. The Court had decided, by a majority, that Asos was entitled to the benefit of the use of its own name defence. The fact that the members of the Court had arrived at different conclusions did not justify the grant of permission to appeal.
In other words, the Court of Appeal has confirmed that a majority verdict, in which a minority of the members reach a conflicting view to the majority, does not mean that the Court has erred in law in reaching its decision.
It remains open to Assos to apply to the Supreme Court for permission to appeal.
Invitation to refer questions to the CJEU refused
The Court of Appeal declined a request from Assos that a series of questions be referred to the CJEU for a preliminary ruling.
The fundamental principles explored in the Court of Appeal's 1 April 2015 judgment may beg the question as to whether they should be left to national courts to determine. However the Court of Appeal did not address this. Kitchin LJ stated that neither party had suggested in the course of the appeal hearing that any issue had arisen which might require a reference to the CJEU and the Court of Appeal had not found it necessary to refer any question in order to reach its decision.
The learning from this is that litigants' legal teams should be alert for points of law on which CJEU guidance might be appropriate and bring them to the court's attention at least by the end of the trial hearing. Once a decision is final, it is too late.
Requests for declaratory relief and liberty to apply refused
The Court of Appeal also refused to order declaratory relief which had been requested by the parties only following the Court of Appeal's decision. Nor was the Court prepared to contemplate orders which would have the effect of making its unconditional, 1 April 2015 decision, conditional upon the acts of either of the parties.
Refusing Assos liberty to apply, Kitchin LJ reiterated the general principle that should there be a material change in circumstances at some time in the future, an application could be made to the court or proceedings commenced as considered appropriate. The Court would then deal with the application or proceedings on the merits and in light of all the circumstances.
The learning from these aspects of the decision is that litigants' legal teams should consider the relief which their clients would wish for following the various possible outcomes of the legal issues in dispute, and particularise all relief that they would wish to seek, if necessary by amending pleadings. While there may, at times, be scope to tailor relief following the first instance trial, after an appeal decision it should be assumed that there will not be such scope, even where the first instance ruling is over-turned.