Why did easyGroup lose the EASYOFFICE case?
easyGroup has successfully enforced trade marks with the EASY prefix in many courtrooms over the years. It even places posters on the underground asserting its rights to various EASY brands. But it failed in its latest case, in which it alleged infringement of four trade marks for EASYOFFICE (easyGroup Ltd v Nuclei Ltd & Ors).
As the judge, Mrs Justice Bacon, stated, these proceedings were the culmination of a 20-year dispute that included actions in the High Court, UK IPO and EUIPO as well as defamation proceedings. This action alone involved 35 separate issues and four top barristers and resulted in a judgment of nearly 350 paragraphs – which is worth reading in full for its analysis of the parties’ witnesses and arguments.
The result was that the judge revoked all of the marks for non-use and found that the defendants’ use of EASYOFFICE and EASYOFFICES did not infringe. Of the many interesting findings in the judgment (some of which may of course be appealed), we will focus on three.
Impact of Brexit
As in a previous trade mark case involving easyGroup, the proceedings in this dispute spanned Brexit day and the judge said that the court retains the same jurisdiction regarding infringement and validity of the EU marks as it had before.
However, the parties disputed the correct approach under EU to law to UK prior rights relied on to challenge the validity of an EUTM, and therefore the date on which the validity of the earlier mark must subsist.
As the judge pointed out, this question has been addressed in several EU General Court judgments (see our recent post)
She concluded that there was no difference between opposition and invalidity proceedings, and the relevant dates for assessing the defendants’ prior rights were therefore the filing dates of the EU trade marks, both of which were when the UK was still an EU member.
As the proceedings commenced before the end of the transition period, the assessment of the defendants’ invalidity counterclaims was therefore unaffected by the UK’s withdrawal from the EU.
The defendants sought to invalidate the marks on various grounds, including bad faith. In particular, they argued that easyGroup filed the applications to gain an unfair tactical advantage.
However, following the recent SkyKick judgment in the Court of Appeal, the judge disagreed, finding that:
“the contemporaneous documents demonstrate that easyGroup did have a genuine intention to extend its activities to the serviced office sector, and that easyOffice was a trade mark that was sought as part of that development alongside a number of other new project ideas that had been discussed. There is no evidence to support the submission that the sole purpose in applying for the … marks was to exclude Nuclei from the market or otherwise compete unfairly with it.”
Likelihood of confusion
The marks were revoked as the judge found that easyGroup had not provided evidence of “real commercial exploitation”, nor any proper reasons for non-use.
She also had to determine whether there was infringement in the period before revocation, during which the marks were valid. She concluded there was not, rejecting the claim under Section 10(1) of the Trade Marks Act 1994 (double identity) on the basis that brokerage of office space is not the same service as rental of office space.
She also rejected a claim under Section 10(2). She found that, for some of the marks, there was no likelihood of confusion due to differences between the marks and the signs and lack of evidence of confusion. For the other marks, “the absence of any concrete evidence of confusion in circumstances of over five years of side-by-side use indicates that confusion was not in fact likely; and to the extent that there was confusion, it was such as should be tolerated given the honest concurrent use by Nuclei of the EASYOFFICES sign”.
As in some other recent cases (such as the recent FUNTIME case), it is notable that a finding of actual confusion (or lack of it) is highly persuasive when judges are assessing whether there is a likelihood of confusion.