easyGroup Limited lost its claim of trade mark infringement and invalidity against Easy Live (Services) Limited in a High Court decision handed down on 4 September 2024 (easyGroup v Easy Live (Services) [2024] EWHC 2282 (Ch)).
Background
easyGroup Limited ("easyGroup") claimed the defendants' ("Easy Live") use of EASY LIVE and EASY LIVE AUCTION related signs infringed its "Easylife" trade marks under s10(2)(b) of the Trade Marks Act 1994 ("TMA"), i.e. a similar mark used in relation to identical or similar goods or services, with a likelihood of confusion on the part of the relevant public.
It may be recalled that easyGroup had previously brought an action against Easy Live for its use of the same signs. The Court of Appeal's decision on that action was handed down in December 2023, and Easy Live was held to have infringed easyGroup's trade marks under s10(3) TMA and to be liable for passing off (see our blog on this here: Court of Appeal rules that easyGroup suffered damage in Easy Live Auction dispute | Fieldfisher).
For reasons not made clear in the current judgment, easyGroup brought this second action against Easy Live. While the first action had relied on five EASY-formative trade marks, including EASYJET and EASYGROUP, this second action relied instead on various EASYLIFE marks which easyGroup had acquired from a third party as part of a settlement of litigation with that third party1.
The offending use
Easy Live provided back-office software for use in the auctioneering trade. It also provided, via a website at "easyliveauction.com", an online platform which allowed auction houses to broadcast auctions to customers and allowed customers to bid on lots in those auctions in real time.
easyGroup relied on the following trade marks (together referred to as the "Easylife Marks"):
- UK Trade Mark Registration No. UK00903367695
in Classes 35 and 39, effective from 22
September 2003 (the "Easylife Stylised
Mark"); and - UK Trade Mark Registration No. UK00003532904 "easylife/Easylife (series of 2)" in Class 35, effective from 14 September 2020 (the "Easylife Word Mark").
easyGroup's complaint centred on Easy Live's use of the following signs:
- "EASY LIVE" and "EASY LIVE AUCTION" (and variations such as "easy live", "Easy Live", "EasyLiveAuction" and "EasyLiveAuction.com");
- "EASY LIVE (SERVICES) LTD"; and
- The stylised signs as follows (the "Easy Live
Signs"):
Easy Live owns UK Trade Mark Registration No. UK00003372957 for "EASY LIVE AUCTION/EASYLIVEAUCTION (series of 2)" in Classes 9, 38 and 42, effective from 5 February 2019 (the "Easy Live Registration").
easyGroup filed an invalidation action against the Easy Live Registration based on its earlier Easylife Stylised Mark. Meanwhile Easy Live sought to revoke the Easylife Stylised Mark for non-use and to invalidate the Easylife Word Mark due to the earlier Easy Live Registration and its associated goodwill.
The Decision
Nicholas Caddick KC, sitting as a Deputy High Court Judge, gave judgment on the revocation issue first before deciding on the infringement claim and subsequent claims for invalidity.
Revocation for non-use
easyGroup accepted that Easylife2 (its predecessor in title) had not used the Easylife Stylised Mark in its registered form but instead use was made via five different variants of it. This was permissible under s46(2) TMA which states that genuine use of a trade mark "includes use in a form (the "variant form") differing in elements which do not alter the distinctive character of the mark in the form in which it was registered".
A comparison between the Easylife Stylised Mark and the five variants of the mark follows:
The judge considered previous cases setting out the approach to be taken in assessing whether the distinctive character of a mark has been altered. In summary, one should undertake a global assessment, looking at the distinctive and dominant features of the mark based on their intrinsic qualities and relativity to each other, bearing in mind that "[t]he weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive ... [t]he reverse is also true" (quoting from the EU General Court in Case T-24/17, LA Superquimica SA v EUIPO).
It was concluded that none of the five variants altered the distinctive character of the Easylife Stylised Mark despite the differences identified. In the judge's view, the changes to the 'tick' device and the font, strapline and colours in the logo variants did not alter the distinctive character of the registered logo, whilst both the plain text variants retained EASYLIFE, the dominant element of the mark, and therefore also did not alter the distinctive character of the mark. Therefore the five versions set out above were deemed to be valid variants of the Easylife Stylised Mark for the purposes of proving genuine use.
Although this analysis stacks up legally, it is questionable whether it does so in the real world eyes of consumers, particularly when one considers the large sums spent in developing and tweaking logos based on in depth research in order to maximise their attractiveness to consumers.
Indeed, Mr Justice Fancourt took the opposite view a week later in his judgment in easyGroup v Easyfundraising, holding that these were not variants and revoking the Easylife Stylised Mark. See below and our separate blog on that case for further commentary on this point.
The judge then went on to consider whether there had been genuine use of any/all of the variants for the services for which the Easylife Stylised Mark was registered. The evidence showed no use of that mark for the class 39 services ("Transport; packaging and storage of goods"), and the judge said he would leave whether the mark should be partially revoked in respect of class 39 "to be dealt with at the form of order hearing".
As to the class 35 services, this broke down into a) "advertising services; promotion services" and b) four types of "bringing together for the benefit of others" retail services, differentiated by the method of providing those retail services (via a television shopping channel, a catalogue, a website and a wholesale outlet). easyGroup did not argue that the mark had been used for the television shopping channel and wholesale outlet limbs of b), but did provide evidence for the remainder of the class 35 specification.
There was much discussion about which variants had been used for which services and whether the services of the subsets for which they had been used were distinct categories. The judge referred to Merck v Merck3whichsays that "[i]f the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories ... these issues are to be considered from the viewpoint of the average consumer and the purpose and intended use of the products or services in issue".
The judge's view was that the different limbs of the services in b) really amounted to different modes of delivery of services rather than different or distinct categories of services, and so he rejected the claim for revocation of the class 35 services. Confusingly, however, he also said that "it is unclear whether there should be a partial revocation to reflect the fact that there had been no use ... with regard to the two other forms of "bringing together" services ... I will leave that to be dealt with at the form of order hearing".
Infringement under s10(2)(b) – Likelihood of Confusion
Easy Live had accepted there was a similarity between the Easy Live Signs and the Easylife Stylised Mark; however the Court felt it was necessary to examine the extent of the similarity given its relevance in determining if likelihood of confusion existed.
The Court held there was a "moderate" visual and aural similarity between the Easylife Stylised Mark and the Easy Live Signs . Emphasis was put on the conceptual nature of the marks where it was held "the average consumer looking at the Defendants' Signs, would see that the word "easy" is being combined with a different descriptive word ("live"), to create "easylive" which is conceptually very different to "easylife". Conceptually, the mark "easylife" stands by itself – a person can have an easy life. Nothing more needs to be said. In contrast, "easylive" does not stand by itself but is adjectival in nature. It needs something more and it begs the question – an easy live what?".
Another key difference was the triangular "tick" device within the Easylife Stylised Mark which was not displayed in any of the Easy Live Signs. According to the Court "that device served to emphasise the concept created by the word "easylife" and it would be seen by the average consumer as an important part of the mark".
When comparing the services, the Court categorised Easy Live's services as "advertising services", "catalogue services" and "auction broadcast services". All three categories of services were assessed as being identical or highly similar to the Class 35 services for which the Easylife Stylised Mark was registered.
In deciding whether likelihood of confusion existed, the Court held the average consumer would not assume that the party trading under the sign which contained the word "easy" and for identical or similar services was easyGroup. Despite the average consumer having awareness of easyGroup's use of the word "easy", it did not have a monopoly of such use. The identified differences between the marks meant the average consumer was not likely to be confused. This is despite the enhanced distinctiveness of the Easylife Stylised Mark and the identical or similar nature of the parties' respective services. As a result, the Court rejected easyGroup's infringement case based on the Easylife Stylised Mark.
easyGroup had relied on 87 examples of instances of actual confusion, of which only seven were considered to have any merit. That said, even with the seven examples, the Court held there was no real likelihood of confusion as none of the examples were "particularly convincing or strong evidence of relevant confusion". The judge looked at the law regarding actual confusion and pointed out that evidence ostensibly of confusion needed careful consideration to ascertain whether or not it showed the right sort of confusion – "confusion as to the parties providing the services". The examples given showed nothing more than administrative-type errors.
Furthermore, the judge noted that those seven weak examples of actual confusion had been found despite 14 years of co-existence of the two brands, which made the likelihood of confusion so low as to be insignificant. Note that it was not necessary to consider honest concurrent use, as no prima facie case of likelihood of confusion had been found; the recent cases of easyGroup v Nucleiand Match v Muzmatch had made clear that honest concurrent use was a factor in the infringement analysis and not a defence to infringement, and so it needed not be considered here.
Finally, the Court considered infringement of the Easylife Word Mark. In similar reasoning to the comparison made to the Easylife Stylised Mark, the Court also held there was no likelihood of confusion arising in relation to the Easylife Word Mark and therefore easyGroup's infringement case based on this mark was rejected.
Easy Live's claim to invalidate the Easylife Word Mark
Easy Live's invalidity claim had been argued as a 'squeeze': if there was a likelihood of confusion between the mark and the sign so that infringement was found, then the mark should not have been registered in the first place as it conflicted with Easy Live's earlier use. However, no likelihood of confusion was established in the infringement claim between the Easylife Word Mark and the Easy Live Signs. This meant the invalidity claim was considered to be unnecessary and fell away.
easyGroup's claim to invalidate the Easy Live Registration
easyGroup had sought the invalidity of the Easy Live Registration based on the grounds of likelihood of confusion (s5(2)(b) TMA) and passing off (s5(4)(a) TMA) with its earlier Easylife Stylised Mark.
The Court mirrored the judgment in the infringement claim and held that as there was no likelihood of confusion and passing off in the context of the infringement action, the claims under s5(2)(b) and s(5)(4) must also fail.
Inconsistent with the decision in easyGroup v Easyfundraising
On 11 September 2024, a week after this judgment was handed down, Mr Justice Fancourt handed down his decision in easyGroup v Easyfundraising, deciding that the variants of the Easylife Stylised Marks discussed above did not in fact fall under s46(2) TMA. There had therefore been no genuine use of that mark and it was revoked for non-use. Fancourt J said, at paragraph 175:
"I have naturally read carefully the Deputy Judge's reasoning for his conclusion to see whether I am persuaded that I should follow his decision, despite my own evaluative conclusion that the differences in the variants altered the distinctive character of the mark as registered. I am not persuaded that the word "easylife" is the only distinctive element of the mark, or that the average consumer would detect the tick within the triangle motif in the registered mark and link it to the tickball motif. Even placing the forms side-by-side, which the average consumer does not have the ability to do, it is not an obvious connection. There was no evidence before me to support an argument that the aural characteristics of the mark and variants were of any real significance. For the reasons that I have given, I therefore decide that the distinctive character of the mark is varied by each of the variant forms."
easyGroup is seeking permission to appeal the decision in Easy Live (Services), but there is no sign yet on the court record of it seeking permission to appeal the decision in Easyfundraising. If previous form is anything to go by, we expect it will try to appeal given it lost that case, and we will watch out for developments.
Comments
Clearly it will be interesting to see how the interplay between the conflicting decisions in Easy Live (Services) and Easyfundraising pans out, and whether there will now be an order in Easy Live (Services) dealing with the potential partial revocation of the mark which Easyfundraising fully revoked. We will watch also the progress of the request for permission to appeal Easy Live (Services), and caution is generally advised when considering the parts of this judgment specifically related to permissible variants of marks.
As it stands, a key takeaway from the decision is that easyGroup cannot rely on its "easy" related marks against all third parties which happen to include the word "easy" as part of their sign. As pointed out by the Court, the average consumer is not going to assume that easyGroup has a monopoly of the word "easy" based on its use, even if it is substantial. This litigation is one of a significant number of actions brought by easyGroup in recent years, some of which have been won and some lost, and it will be interesting to see whether this point marks a climbdown from the high water mark of the monopoly which easyGroup believes its trade marks enjoy.
Footnotes
1. Easygroup Limited v Easylife Limited (Formerly Easylife Group Limited) & Gregory Grant Caplan [2021] EWHC 2150 (Ch). easyGroup's claims for trade mark infringement and passing off were dismissed by the High Court. easyGroup was granted permission to appeal but a settlement was reached, which included an assignment of the EASYLIFE marks to it.
2. Its predecessor in business. The judgment does not specify but it is assumed that easyGroup acquired sufficient rights in its EASYLIFE settlement to enable it to rely on Easylife's use in this way.
3. Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 183
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