Trade Marks and Passing Off - easyGroup Ltd v EasyFly

Author Aero Icarus Licence CC BY-SA 2.0 Source Wikipedia ATR 42














Jane Lambert

Chancery Division (Mr Justice Nugee) easyGroup Ltd. v  Empresa Aerea De Servicios y Facilitation Logistica Integral SA (Easyfly SA) and others [2020] EWHC 40 (Ch) (14 Jan 2020)

This was an action by easyGroup Ltd. against the Colombian airline Empresa Aerea de Servicios y Facilitation Logistica Integral SA which trades in the name or style of EasyFly and its president Alfonso Avila Velandia for trade mark infringement, passing off and conspiracy. easyGroup complained that EastFly's website supplied air tickets to British travellers under the EasyFly sign. It also sought to join the French manufacturer, ATR Aircraft, as a third defendant. ATR had flown aircraft in EasyFly's livery on test flights around France and on a delivery mission through Spanish airspace. It had also published a press release announcing its sale of aircraft to EasyFly at the Farnborough airshow.

The proceedings before Mr Justice Nugee were not a trial but a number of interlocutory applications on the jurisdiction of an English court to try the action.  EasyFly and Mr Avila had been served in Colombia with the permission of Mr Justice Morgan pursuant to a without notice application by easyGroup under CPR 6.36.  Those defendants applied to Mr Justice Nugee to set aside that permission, or alternatively for the claim to be struck out, or, in the further alternative, for the proceedings to be transferred to the Intellectual Property Enterprise Court.  In reply, easyGroup applied for retrospective validation of the original service in case there had been a defect in that service.  It also sought permission to amend its particulars of claim to join ATR and make further claims against the existing defendants.  Mr Justice Nugee heard those applications on 31 Oct and 1 Nov 2019 and delivered judgment on 14 Jan 2020.

His lordship set aside Mr Justice Morgan's permission to serve the proceedings in Colombia on the ground that there had been a failure to make full, frank and fair disclosure.  Accordingly, the question of amending the claim form and particulars of claim to join ATR did not arise.  If it had, Mr Justice Nugee would have held that there was no jurisdiction for the English court to hear claims based on acts in France or Spain, whether based on trade mark infringement or conspiracy. There was jurisdiction to hear the claims based on the issue of the press release in the UK, but he would have refused permission to amend to bring such claims on the basis that they were de minimis.

At paragraph [90] of his judgment, Mr Justice Nugee said:

"It is well established, and was not disputed, that it is the duty of an applicant on a without notice application to make full and frank (or fair) disclosure of matters material to the application: see the notes in the White Book (Civil Procedure 2019) at §6.37.4."

The application for permission to serve the proceedings outside the jurisdiction was made without a hearing and the only evidence before Mr Justice Morgan was a witness statement by one Kramer.  At paragraph 22.4 of his statement, Mr Kramer said:

"At the date of issue, the Defendants' Services are offered for sale and it is inferred sold to persons wishing to travel from London, or other airports in the EU, to Colombia."

Mr Justice Nugee said at [93]:

"A natural reading of this suggests that Easyfly might be offering flights from London or the EU to Colombia. This was not what was meant, which was only that persons travelling from London or the EU to Colombia could buy internal Colombian Easyfly flights before they left. That would not matter if it was made clear elsewhere that all that Easyfly did was offer internal Colombian flights. But I cannot find any statement to that effect in Mr Kramer's evidence."

Mr Kramer had exhibited a letter from Colombian lawyers stating that Easyfly did not operate services into or out of the UK or EU.  The problem was that unless a judge's attention is specifically drawn to some point, it cannot be assumed that he or she will have picked up something that can only be found in exhibits. It has long been established that material facts should be clearly drawn to the judge's attention: see the notes in the White Book at §6.37.  The judge concluded at [100] that there had been a failure to put material matters fully frankly and fairly before Mr Justice Morgan.

Mr Justice Nugee referred to  NML Capital Ltd v Argentina [2011] UKSC 31, [2011] 2 AC 495, [2011] 3 WLR 273 when the Supreme Court held that the court had a discretion where there had been a material non-disclosure. It could either (a) set aside the order for service and require a fresh application or (b) treat the claim form as validly served and deal with the non-disclosure if necessary by a costs order.  He noted at [121]:

"This is not a case where the causes of action and facts now relied on by easyGroup are the same as they were before Morgan J. On the contrary many of the facts now relied on did not feature in the case as presented to him; and the facts relied on before him (the sale through kiwi.com) were no longer relied on before me. In a very real sense the case is a new and different case from that started 2 years ago. That, on the authority of NML, does not prevent the Court from granting permission to amend and dealing with the case as newly presented, but it is in my judgment a factor which points towards making easyGroup start again. This is not a case, as NML was, where if the original permission were set aside the claimant would simply issue an identically worded duplicate set of proceedings. In the present case easyGroup wishes to make very substantial changes to the case as originally presented to Morgan J, and indeed Mr Bloch [counsel for the claimant] accepted that even the amended Particulars of Claim he put before me would benefit from some tidying up in the light of the evidence on this application. I think there is in those circumstances something to be said in any event for requiring easyGroup to start again, so that it can put forward the case it now wishes to put forward as a fresh start." 

In those circumstances, he proposed to set aside Mr Justice Morgan's order granting permission to serve the defendants out of the jurisdiction.

Although those defendants were entirely successful in these interlocutory proceedings, Mr Justice Nugee made clear at paragraph [152] of his judgment that there is a serious issue to be tried in relation to each of the claims now sought to be brought by easyGroup against Easyfly and Mr Ávila.  CPR 6.36 enables a claim form to be served out of the jurisdiction with the permission of the Court if any of the gateways set out in paragraph 3.1 of PD 6B applies.  In AK Investment CJSC v Kyrgyz Mobil Tel Ltd and others (Isle of Man) (Rev 2 [2012] WLR 1804, [2012] 1 WLR 1804, [2011] 4 All ER 1027, [2011] 1 CLC 205, [2012] 1 All ER (Comm) 319, [2011] UKPC 7, the Privy Council had held that a court has to satisfy three requirements:

"(1) That there is a serious issue to be tried on the merits. The current practice in England is that this is the same as the test for summary judgment, namely whether there is a real (as opposed to fanciful) prospect of success.
(2) That there is a good arguable case that the claim falls within one of the gateways.
(3) That in all the circumstances of the case England is clearly or distinctly the appropriate forum for the trial of the dispute. This requirement is reflected in CPR  r 6.37 (3) which provides that the Court will not give permission unless satisfied that England and Wales is the proper place to bring the claim."

As for the trade mark claims, the judge thought that the substantive argument was whether there was a serious issue to be tried. He did not think that there was any difficulty in meeting the second and third requirements.  He considered each of the claimant's complaints and found that there was a serious issue to be tried. He reached the same conclusions with regard to passing off and conspiracy.  In reading this judgment it is important to note that there had been no finding of facts (even though some were not actively disputed) and that finding issues to be tried is not the same thing as a finding of liability.

Anyone wishing to discuss this article or any of the issues that arose in this case is welcome to call me on 020 7404 5252 or contact me through my message form.

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