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  • Writer's pictureRosie Burbidge

Why did easyCOSMETIC not infringe EASY marks?

coloured streamers

easyGroup has lost its latest trade mark case against a company using the easy prefix, in this case easyCOSMETIC. In her judgment in the High Court, Mrs Justice Bacon found that there was no infringement. She also partly revoked one of easyGroup’s registered trade marks for lack of genuine use.


The Background to easyCOSMETIC

Since 2008, easyCOSMETIC has operated websites in Germany, Austria, Switzerland, the Netherlands and Belgium using a digital nomad dropshipping model. It has used the easyCOSMETIC sign as a word and in two figurative forms (pictured).


easyCOSMETIC orange logo

easyCOSMETIC grayscale logo

easyGroup sued the operators of the German and Austrian websites based on the reputation of its family of "easy--" marks that use the Pantone 021c colour and the Cooper Black font. Specifically, it alleged infringement of two EU word marks for EASYJET for services in class 35 and class 39. The claim was brought before the end of the Brexit transition period (31 December 2020) so the English High Court was sitting as an EU Trade Mark Court.


easyGroup orange logo


Infringement

The judge found that at the relevant time, the only easyGroup brands on the market in Germany and Austria were easyJet and easyHotel. “That is not sufficient for a finding of use on the market of a family of marks,” she said.


In the UK, a family of "easy--" marks did exist at the relevant time. However, the judge did not accept that its had come to indicate to the average UK consumer that the use of a mark comprising "easy" as a prefix was a reference to goods and services associated with, approved, authorised or endorsed by easyGroup alone. She added:


“the evidence certainly does not establish that simply using the word ‘easy’ conjoined with a second word, and using orange/white colours, is or was at any material time perceived by consumers in the UK or elsewhere as indicating an easyGroup brand.”

easyGroup argued that there was infringement due to indirect confusion. However, the judge said the similarities between the EASYJET mark and the easyCOSMETIC sign were offset by the visual and conceptual differences. She added that, despite many years of parallel trading and an extensive search by easyGroup of its records, there was “no evidence of actual confusion by anyone”.


Overall, Bacon J concluded that there was no likelihood of indirect confusion. Although it was therefore not necessary to consider honest concurrent use, the judge also said that over time most relevant consumers have come to learn that EASYJET and easyCOSMETIC have different trade origins:


“I consider that by the later part of the relevant period the length of time for which easyCOSMETIC had been in business, and the scale of its trade, would have been sufficient to indicate the education of consumers as to the different trade origins of the mark and signs.”

She also rejected easyGroup’s argument based on infringement under Article 9(2)(c), finding that the easyCOSMETIC mark would not create a link to the EASYJET marks in the mind of the average consumer. She described easyGroup’s assertion that the formation of a link allowed the defendants to trade on the trust that people have in the easy family of brands as “pure speculation” that was not supported by evidence.


Revocation

The defendants argued that easyGroup’s mark should be revoked for “Retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses” in class 35 except insofar as they were provided to passengers on an aeroplane.


The judge agreed that the mark should be partially revoked and its specification limited to in-flight retail services, with effect from 10 January 2020 (the day after expiry of the five-year grace period).


What does this mean?

easyGroup has asserted its marks against other many companies that use the easy prefix. However, it has not always been successful. As this judgment shows, the use of the word easy alone is not likely to be sufficient to prove infringement. Instead, additional elements of similarity in the colour, font or style of branding used and/or evidence of actual confusion are required.


While this decision is a setback for easyGroup, it is unlikely to be deterred from bringing similar cases in the future given the value of its easy brand.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


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