easyGroup, which owns the IP rights for companies such as easyJet and easyHotel, has been active, and largely successful, in bringing actions against other companies using the “easy” prefix. However, it suffered a reverse in a recent judgment against an online retailer, easylife (Easygroup Ltd v Easylife Ltd & Anor [2021] EWHC 2150 (Ch)).
Chief Insolvency and Companies Court Judge Briggs dismissed easyGroup’s infringement and passing off claims against easylife. An important factor in this decision was the fact that easylife has operated an online retail business in the UK since 2000 and the easylifegroup.com website since 2004.
To add injury to non-infringement, the judge revoked two of easyGroup’s trade mark registrations for easyland and easy4men on the basis of non-use, and limited the scope of the group's core registrations for easyGroup and easyJet.
The case was complex and, no doubt, expensive: it involved some 59,000 documents and the index alone ran to 198 pages.
No infringement or passing off
easyGroup claimed infringement under both section 10(2) and section 10(3) of the Trade Marks Act 1994.
On section 10(2) which considers whether there is similarity and a likelihood of confusion, the judge found that the average consumer would not be confused by the signs for six reasons:
the difference in the second word;
easyGroup tends to use just one word after “easy”;
for easyGroup's signs, the second word begins with a capital letter;
the difference in get-up;
the low distinctiveness of the word "easy" (see our recent post on the Oatly case regarding descriptive marks); and
the incidences of actual confusion were insignificant.
Turning to section 10(3) which covers blurring, tarnishment and free riding, the judge found that:
easyGroup had not established a link between the signs complained of and their earlier marks;
there was insufficient evidence of detriment to distinctive character;
there was no evidence that reputation had been diminished; and
the inference of unfair advantage could not be made.
Therefore there was no tarnishment or dilution of the reputation in the mark.
On passing off, the judge concluded: “I find that there is no real likelihood that the use of the signs complained of has been or will be damaging to the Claimant's goodwill or will divert trade from it. easyGroup has failed to discharge the heavy burden to show false representation so that the public believe that the goods or services of easylife are that of easyGroup or otherwise connected in the relevant economic way.”
Consumer evidence
The inclusion of the evidence from five easyland consumers was controversial: easyGroup had applied to have it struck out or excluded on the grounds that it was survey evidence and/or a witness gathering exercise in contravention of the Whitford guidelines or the Court of Appeal guidance in Interflora.
In a judgment rejecting that application on 11 June, Deputy Judge Mr Hugh Sims QC said: “I do not think that I can conclude on this application that that evidence will have no real value ... It is a matter for a trial judge to determine ultimately, on the basis of all the evidence before them, as to how much this really assists them” (Easygroup Ltd v Easylife Ltd & Anor [2021] EWHC 1705 (Ch)).
In his judgment in the main proceedings, Chief ICC Judge Briggs said it would be an error “not to attach no weight to these witnesses”: “Due to transparency issue the weight I do attach is not that which would ordinarily be given to those who are prepared to have their evidence tested. In my judgment the correct approach is to include the evidence within the ‘global assessment’ required.”
easyway decision
There was better news for easyGroup in a separate case it brought concerning the use of the signs easyway, easyway SBH and the easyway logo by a company based in St Barthelemy (EasyGroup Ltd & Ors Easyway SBH & Anor (Rev1) [2021] EWHC 2007 (IPEC)). Recorder Douglas Campbell QC found that these signs infringed four of easyGroup’s trade marks, and that there was passing off in relation to the word signs but not the logo signs.
Despite their location, he found the defendants’ easyway website targeted the UK, and there was a likelihood of confusion based on a medium degree of similarity between the marks and the signs and medium/high degree of similarity between the services. Factors including the enhanced reputation of the marks and the family of travel-related marks outweighed factors such as the descriptive nature of the word “easy” and the lack of evidence of actual confusion.
The conclusion on passing off was based on the finding that the use of the signs was likely to lead the public to believe that the services offered under them were those of the claimants, which would damage their goodwill. However, the use of green and blue colours in the logo meant its use did not amount to passing off.
To find out more about the issues raised in this case contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
#IP #IntellectualProperty #IPLaw #UKlaw #UKtrademarklaw #trademarks #trademark #TM #trademarkinfringement #infringement #passingoff #easyGroup #easyJet #blurring #tarnishment