A colossal failure of common sense ?

As good lawyers should, I like to read up on important recent decisions, and a case I read recently stood out for me for reasons which may not be immediately obvious. Litigation cases start for a number of reasons – ranging from the vital areas of debt recovery for small businesses, to issues which are

Home » Debbie Serota » A colossal failure of common sense ?

As good lawyers should, I like to read up on important recent decisions, and a case I read recently stood out for me for reasons which may not be immediately obvious.

Litigation cases start for a number of reasons – ranging from the vital areas of debt recovery for small businesses, to issues which are based on ego as well as law. For individuals and small businesses, a civil court dispute can be very high stakes indeed.

Another category of case is technical litigation, often played out between 2 established and sizeable businesses. Whilst litigation is inherently expensive and risky, in these situations, winning or loosing is not generally terminal for the business. It becomes very strategic. In some cases it can possibly be opportunist.

Whilst I am unable to say definitively, the recent case I refer to, seems to me, to possibly fall into the opportunistic category.

It was a trademark and passing off claim – common sense, in my opinion, would suggest that, for the reasons described below, the claim may not have centred on real damage to the claimant. Yes, the claimant had every right to make the claim on technical legal grounds. It had the benefit, and had paid no doubt a considerable premium in costs and time obtaining it, of a trademark, but in my view, common sense would always suggest the potential damage of the breach complained of was unlikely.

My point is, and again, pure speculation, that the claimant was perhaps strategising that, based on it’s legitimate technical claim, the defendant, being a successful business, growing and with assets, would look to settle, making the litigation worthwhile for the claimant.

We don’t know whether offers to settle the claim were made – these would be private as negotiations are generally without prejudice (meaning the court is unaware of them). In most cases, negotiations do take place. What we do know is that this case reached full trial, no doubt at high expense. This raises the point that in most legal disputes, it can be very difficult tio convince a client to withdraw a claim (which in turn usually means paying costs to the date of withdrawal) once a certain point has been reached.

So onto the case, and maybe you can see what i mean about common sense.

Assos v ASOS

I know that cycling is increasingly popular but I am not a cyclist. I am not a fashionista either (in my experience most lawyers aren’t !) but I have heard of ASOS, the online fashion retailer. Assos is apparently a well know and very established specialist supplier of cycling related apparel. It sells mainly through distributors in physical shops around the world.

Assos had the trademark. it claimed that ASOS was in breach and liable for passing off.

To me, common sense would suggest, notwithstanding the clear similarity in names and possibly confusion, that these 2 businesses operate in very different markets, and that any confusion was and is unlikely to have damaged Assos significantly. In fact, because ASOS is very popular online, potentially the confusion could even benefit Assos …. ?

The case judgment is interesting and I would hope not just for lawyers – you can find it here, 

It’s very useful as a summary of trademark and passing off law, but it’s also useful in relation to how evidence in claims is changing rapidly, taking into account the importance of the internet. particularly noteworthy perhaps is that an important aspect of the evidence came from the google analytics account of ASOS. Increasingly, cases of many types are being assisted and even determined by data and the beauty of online activity and retailing is that the data often is free and comes from verifiable 3rd party sources. The google analytics data was perhaps more useful for the court than surveys, which are a common way for a claimant in a trademark case to seek to prove a case, based on reactions and hoped for confusion (from the claimant’s perspective) to be able to succeed with a trademark breach or passing off claim.

Debbie Serota - Partner & commercial solicitor
Debbie Serota – Partner & commercial solicitor

So, Assos lost the case and probably had a costs order made against it. If it was tactical litigation play, it didn’t work. For me, common sense would have led to the conclusion that the claim wasn’t evidentially strong, albeit it may have been on a sound technical legal basis.

Debbie Serota

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