The Court of Appeal has upheld the High Court findings that easyGroup had failed to prove genuine use of its EASYOFFICE trade marks during the relevant period and its rights had not been infringed.
In a long-standing 20-year dispute between the parties, easyGroup Limited, owner of several EASYOFFICE UK and EU trade marks, brought a trade mark infringement claim against the Defendants, Nuclei (a broker of serviced office space) and others, in relation to their use of the sign EASYOFFICES (emphasis added). The Defendants counterclaimed for a declaration that easyGroup's trade marks were invalid on the basis of their prior unregistered rights, or alternatively for non-use.
In around May 2000, Nuclei had begun trading as 'EASYOFFICES' (or slight variations thereof). In around September 2002, easyGroup applied to register 'EASYOFFICE' (the subject of these proceedings) in various classes including the "hire of temporary office space" and acquired a domain name, but did not launch its business until around June 2006.
Proceedings were issued by easyGroup in 2019 on the basis that (a) the sign being used and the services were identical (i.e. "double identity"); and/or (b) there was a likelihood of confusion amongst the public.
The Defendants counterclaimed that easyGroup's EASYOFFICE trade marks should be revoked for non-use on the basis that there had been no genuine use by easyGroup for a continuous period of 5 years.
High Court Decision
There was no "double identity" infringement because:
- The sign EASYOFFICES was "almost identical" to the trade mark EASYOFFICE but crucially not identical; and
- The service provided was not identical. easyGroup's registration was for the "hire of temporary office space" and the Defendants' business was in the brokerage or advertisement of office space (i.e. bridging the gap between office owners and seekers of office space).
There was no likelihood of confusion. This was based on:
- The lack of actual confusion evidence, whilst not necessarily required, was a material factor suggesting that confusion was not likely (especially where there was ample time for confusion evidence to emerge given the parties' co-existence for a number of years); and
- Even if there was a finding of a likelihood of confusion, again, given the parties' co-existence, there was a strong case for the Defendants' honest concurrent use of EASYOFFICES.
On the question of revocation, the High Court found that easyGroup had failed to prove and / or evidence that it had made genuine use of its EASYOFFICE trade marks during the relevant period. easyGroup produced some documentary evidence relating to sales of office space and advertising spend but that was not sufficient, or supported by sufficient witness evidence. Further, easyGroup provided website screenshots showing the EASYOFFICE trade marks but lacked supporting evidence such as the numbers of site visitors.
Court of Appeal Decision
EasyGroup's appeal failed on all counts. On the double identity claim, whilst the Court of Appeal disagreed with the assessment on identity of services, the decision on infringement was upheld on the basis that the signs were not identical. For the likelihood of confusion claim, there were no errors of law in the High Court's decision and the High Court Judge was entitled to make the finding that they did. On the question of honest concurrent use, easyGroup had knowingly tolerated the Defendants' use for many years and the Defendants were aware of this.
The Court of Appeal also upheld the decision that easyGroup had failed to prove genuine use of the trade marks during the relevant period and its marks should be revoked.
Brand owners have 5 years from registration of a trade mark in which to use it for the goods and services registered in the relevant market without fear of losing trade mark protection on the grounds of non-use. If a trade mark is not put to genuine use for a continuous 5 year period, it is vulnerable to be revoked – you must "use it or lose it". This mechanism reduces the number of redundant marks on the register and allows other entrants to the market. It is therefore crucial to make genuine use of your rights and to keep comprehensive records and evidence of use to deploy as required.
The decision is also a reminder that, whilst evidence of actual confusion is not a requirement, it can be a persuasive factor when it comes to longstanding co-existence.
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