Case No: A3/2013/3163
A3/2013/3170
A3/2014/0619
Neutral Citation Number: [2015] EWCA Civ 377

IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
The Hon Mrs Justice Rose
[2013] EWHC 2831 (Ch)
[2014] EWHC 123 (Ch)
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: Wednesday 22nd April 2015

Before:

LORD JUSTICE KITCHIN
LORD JUSTICE UNDERHILL
and
LORD JUSTICE SALES
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Between:

	(1)	Roger Maier
(2)	Assos of Switzerland SA	Appellants/
Claimants	
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	(1)	ASOS plc
(2)	ASOS.com Limited	Respond-ents/ Defendants	
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(Transcript of the Handed Down Judgment of
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Roger Wyand QC and Benet Brandreth (instructed by Bird & Bird) 
for the Appellants/Claimants
Daniel Alexander QC and Andrew Lykiardopoulos QC 
(instructed by Dechert LLP) for the Respondents/Defendants

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Judgment
Lord Justice Kitchin: 

1.	This is the judgment of the Court in relation to the various outstanding matters following our main judgment in this appeal ([2015] EWCA Civ 220). In arriving at this judgment we have given careful consideration to all of the evidence and submissions filed by the parties.  
Undertakings
2.	Assos invites us to require Asos to give certain undertakings to this Court not to resume certain activities which it has carried out in the past or about which Assos is concerned. Specifically Assos invites us to require Asos to undertake   not to (i) bid on ASSOS as a keyword; (ii) sell products described as cycling wear via www.asos.com; or (iii) change its logo to a form closer to that used by Assos.  In practice, though not so framed, what Assos is seeking is injunctive relief in these particular respects.
3.	We have concluded it is not appropriate to require these undertakings from Asos.  No such relief was sought in the Appellant’s Notice or in the submissions on the appeal, and it is too late to seek it now.  We have decided by a majority that the appeal against the finding of non infringement must be dismissed, but we have not done so subject to the giving of undertakings or on any other terms.  Further, and as we explain below, we do not accept that our refusal to require undertakings would necessarily leave Asos free to carry out these activities. However, any complaint about any change in Asos’ manner of trade would have to be considered in the light of all the circumstances pertaining at the time.
Declarations
4.	Assos seeks certain declarations as to infringement and the invalidity of the UK mark. We do not consider it appropriate or necessary to make these declarations.  Assos has never claimed declarations of this kind hitherto and we consider that our judgments are clear.
Paragraph 1 of the 2013 Order
5.	Asos invites us to dismiss the appeal against paragraph 1 of the order of Rose J made on 16 October 2013 (“the 2013 Order”).  Assos accepts that we should dismiss the appeal against that order but contends that we should do so only in so far as it relates to infringement of the CTM.  
6.	We do not believe that it is appropriate to qualify our order.  The appeal was against paragraph 1 of the 2013 Order and it has been dismissed.  Our order must reflect that ruling.  
Liberty to apply
7.	Assos invites us to give it liberty to apply to the High Court “should the own name defence under Article 12(a) of the Regulation cease to apply to [Asos’] use of the sign ASOS”.  It contends that the law may change and, in any event, that Asos may change its manner of trade.  
8.	We have come to the conclusion that it is not appropriate to give Assos the liberty to apply that it seeks.  Should there be a material change in circumstances at some time in the future, then Assos may make such application or commence such proceedings as it may consider appropriate and the Court will no doubt deal with that application or any proceedings, as the case may be, on the merits in the light of all the circumstances and in accordance with established principles.
Dismissal of respondents’ notices
9.	The Court does not consider it appropriate to make an order dismissing the respondents’ notices.
Costs
a.	  Costs of the Appeal
10.	Assos recognises that Asos is the overall winner but says that it has won on three discrete issues, namely infringement under Article 9(1)(b) and (c) of the Regulation, the invalidity of the CTM under Article 8(4) of the Regulation and the invalidity of the UK mark under s.5(2)(b) of the 1994 Act.  It contends that in these circumstances it would be just and appropriate for this Court to reduce the costs which may be recovered by Asos.  Mr Brownlow, a partner in the firm of solicitors instructed by Assos, estimates that 57% of Assos’ costs are attributable to these issues and so Assos invites us to order that Asos should have only 43% of its costs of the appeal.
11.	Asos responds that 5% of its costs are attributable to the attack on the UK mark and that, if doubled, so as to reflect a notional payment by it of Assos’ costs of this issue, it would still be entitled to 90% of its costs.  It contends that its costs should not be subjected to any further discounting.
12.	We have come to the conclusion that Assos is right to acknowledge that Asos is the overall winner, subject to the three issues on which it relies and to which we now turn. As for the invalidity of the UK mark, Asos accepts that Assos prevailed on this issue and we believe that it should therefore pay Assos’ costs of and occasioned by it. As for the CTM, it is true to say that the attack on the mark failed but we consider that there is also merit in the point made by Asos that this attack was run conditionally. We would also note that the costs incurred in relation to this issue were comparatively small.  Accordingly the main dispute arises in relation to the costs of the claim for infringement.  Here we consider there is again some force in the points made by each side.  Assos says with some justification that it has prevailed.  On the other hand, our findings are not all one way and, moreover, the issues are not entirely circumscribed.  Overall, we have come to the conclusion that Assos is entitled to a reduction in the costs it would otherwise have to pay to reflect Asos’ resistance to the findings we have made.  Weighing all these matters together and taking into account our own impression of the costs incurred in relation to each of them, we have decided that a fair and proportionate result would be achieved by awarding Asos 65% of its costs of the appeal as a whole.
b.	   Costs of the trial
13.	We believe it is appropriate to make an adjustment to the costs order of the judge following the trial in the light of the decision of this Court on the appeal, and further to that which has been agreed between the parties in relation to the UK mark. A much more difficult question is what that adjustment should be. We have anxiously considered whether this question should be remitted to the trial judge.  Neither side has invited us to take this course, however.  Accordingly, doing the best we can and having regard to the facts and matters to which we have referred and our own impression of the range of issues before the judge and the time spent upon them, we have come to the conclusion that it is appropriate to order Asos to repay £100,000 of the costs it has recovered pursuant to the order of the judge, together with interest. Such sum is to be repaid in addition to the sum agreed in respect of the UK mark.   
c.	  Payment on account of costs
14.	Having regard to our decision as to the appropriate order to make in relation to the costs of the appeal and the costs of the trial, we direct Assos to make a payment to Asos on account of costs of £50,000.
Permission to appeal
15.	We refuse Assos permission to appeal to the Supreme Court.  We have decided, by a majority, that Asos is entitled to the benefit of the use of own name defence.  Each member of the Court has carried out the necessary evaluative exercise.  It is true that the members of the Court have arrived at different conclusions, but we do not see that as justifying the grant of permission to appeal.
Reference to the Court of Justice
16.	Assos invites us to refer a series of questions to the Court of Justice for a preliminary ruling.  Neither party suggested in the course of the appeal hearing that any issue arose which might require a reference to the Court of Justice and we have not found it necessary to refer any question in order to reach a decision on the appeal. Accordingly we decline the invitation to make a preliminary reference.
17.	The parties are to agree and lodge a draft order reflecting this ruling.