- Superdry, shedding the hoodie for a lawsuit against ASOS
Superdry, shedding the hoodie for a lawsuit against ASOS
Superdry, shedding the hoodie for a lawsuit against ASOS17th September 2021 - Published by Kuits IP team
It appears from a number of recent articles that ASOS is once again involved in legal action as a consequence of its clothing. On this occasion the online clothes retailer appears to be involved in a High Court action due to items of clothing on its website which make use of the word “Osaka”. Superdry filed an action in August on the grounds of trade mark infringement for the use of its registered mark for the word “Osaka” on t-shirts, jumpers and hoodies and sought an injunction to prevent ASOS from flagrantly copying its branding to misled customers.
What are the protections in place?
Superdry is renowned for combining its casual clothing with Japanese styled graphics. It is therefore unsurprising that the entity has, via the owner DKH Retail Limited, sought protection for the word “Osaka” as part of its brand, for the purposes of certain garments, Class 25 which includes sweatshirts, hoodies and t-shirts. The benefit of this approach is that it allows companies to identify what it considers to be key components of a brand and seek a registration for them in order to provide protection and assist in potential enforcement. A word mark like DKH Retail Limited’s provides the broadest form of protection; it allows for application of the registered mark regardless of how a third party has incorporated that mark into a potentially infringing sign regardless of the stylisation adopted. An alternative type of registration which can also be sought is one of a stylised or device mark where a more differentiated form of a mark, typically a form of logo in a formatted style of writing, is sought to be registered. While this form of registration is narrower in its enforcement, the benefit to a potential registrant is that it has an element of distinctiveness to it and therefore if registration is being sought in a largely saturated goods or services market, it may make the issues of dealing with existing marks and infringing their rights easier to overcome.
What are the potential consequences for ASOS?
As the action is in its early stages, it is unclear what steps ASOS will take and the kind of defence it may argue. Undoubtedly, the difficulty that ASOS will have is to overcome that of s.10 Trade Mark Act 1994. The grounds of infringement listed therein are where either a similar or identical mark has been used in relation to goods or services which are identical or similar to those for which the mark is registered, or that the use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. In this case there is overlap between the marks and the goods in question between both parties.
Get in touch with an IP lawyer today
If you would like more advice on trade mark infringement, please contact Senior Associate Humna Nadim on 0161 838 7816 or email email@example.com