Every business has a website. A website that sets out what goods or services are being offered. A website that features the trade mark of the business. A website that can be accessed from anywhere in the world. But does that mean that the business might be liable to a claim of trade mark infringement or passing off from a company that has rights to that trade mark in another country?
It has long been accepted that the mere fact that a website can be accessed anywhere in the world does not mean that the trade mark is being used globally. But things may be different if it is apparent that the owner of the website is looking for business in a foreign country. This is what the case that we're discussing here is all about. It is the UK decision of Easygroup v Easyway, and South African companies with foreign clients would do well to take note of it.
facts and issues
There is a travel-related company that operates in the tiny, French-speaking Caribbean island of Saint Barthélmy. This company offers travel-related services including flights and car bookings, and it does so under the trade mark Easyway. The company has an English-language website that sets out its services, and this website is used by UK-based travel agents and individuals. British travellers apparently make up some 3% of the company's business.
EasyGroup, the company behind the airline EasyJet, as well as a number of other businesses like EasyCar, EasyBus and EasyHotel – sued Easyway in the UK for trade mark infringement. The main issues that arose were these:
- had Easyway used its trade mark in the UK?
- had its services been targeted at UK consumers?
The judge referred to the earlier case of Merck, where Lord Justice Kitchin said that, when determining whether a website is being targeted at a UK audience, the issue must be considered from the perspective of the average consumer - would they believe that a UK audience was targeted?
The judge went on to list various factors that should be considered. The company's intention is clearly relevant, ie. is it intending to target a UK audience? But so are the surrounding circumstances. The appearance and content of the website will be considered, especially if it is in fact possible to order goods on it from the UK. The nature and size of the business might be relevant too.
the judge's findings
A UK audience was clearly being targeted. Relevant considerations according to the judge, included:
- The international nature of the services on offer, namely services for international tourists.
- The fact that the site generated enquiries from UK customers.
- The fact that the site actively engaged with potential customers – it certainly did not try to dissuade them.
- The fact that the site was in English, even though Saint Barthélmy is a French-speaking island.
another Easy case
The judge referred to an earlier decision involving Easygroup, where the court granted an injunction against a company called Easyfly, even though all of its services were provided in Colombia. The reason – even though the services were provided abroad, they were offered in the UK.
a comparison of marks
The mark Easyway (stylised and with logo) had to be compared with the mark Easyjet. There were, said the judge, visual, aural and conceptual similarities.
comparison of services
There were differences between the services, with the island company offering meet-and-greet services. But there were also services that were complementary services to those covered by the registration, for instance car rental.
defence of descriptive use
The Saint Barthélmy company raised the defence that its use of Easyway was descriptive use, in other words, the use of a term indicating the kind, quality, quantity, intended purpose etc. of the services. But this defence was rejected – the judge said the company was not saying "here is an easy way to start your holiday," they were using the name and trade mark Easyway to indicate trade origin.
It was found that there was a likelihood of consumer confusion and therefore trade mark infringement.
some final words
A South African company targeting customers in a foreign country really should make sure that it can use its trade mark in that country. This should involve a clearance exercise (a trade marks search) and, if available, a trade mark registration.
Reviewed by Gaelyn Scott, head of ENSafrica's IP department.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.