ASOS, a UK clothier, applied for registration of the ASOS word mark for goods and services in Classes 3, 18, 25 and 35.
The applicant has operated in Australia since April 2005 through an online ordering service which has amassed a client base of 300,000. The opponent is the holder of the trade mark registration ASSOS covering goods in Class 25. ASSOS is in use in relation to cycling clothing and related gear.
The Delegate found, and the applicant conceded, that the ASOS mark was deceptively similar to ASSOS, and that goods in class 25 and services in class 35 were closely related. However, honest concurrent use was established against the section 44 claim.
The Opponent pressed the section 60 grounds on the basis of reputation of ASSOS in Australia. However, evidence of reputation provided in support was, as the Delegate put it, “unconvincing”. Declarations as to advertising and availability were not supported by sales figures in the relevant periods, nor was length of use considered sufficient to establish reputation.
The Delegate determined that the ASOS trade mark could proceed to registration on the proviso that the claims under classes 25 and 35, where the similarity of goods had been established, were limited by including the words “none of the foregoing being for use by cyclists”, and “other than such goods for use by cyclists” respectively.