Trade Marks and Passing off - Easygroup v Easyway SBH
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Despite their remoteness from the UK and even though all its services were performed outside that country Easyway SBH and Monsieur Roche were sued successfully in the Intellectual Property Enterprise Court for infringing Easygroup Ltd's British trade marks and passing off in EasyGroup Ltd and others v Easyway SBH and another (Rev1) [2021] EWHC 2007 (IPEC). The marks in suit were EASYJET, easyCar, easyBus and EASYBUS and easyHotel and EASYHOTEL.
The action came on for trial before Mr Recorder Carmpbell on 5 and 6 July 2021. He remarked that it was odd that the defendants had never challenged jurisdiction. Had they done so, he speculated, and had their submissions been accepted there might never have been a trial in IPEC or anywhere else in the UK. Instead, they argued inter alia that their services had never been targeted at the UK and that all their services were performed overseas.
As to targeting, the learned recorder referred to the following paragraphs of Lord Justice Kitchin's judgment in Merck KGaA v Merck Sharp & Dohme Corp and others [2017] EWCA Civ 1834, [2018] ETMR 10:
“[167] First, in determining whether an advertisement of goods bearing a trade mark on the website of a foreign trader constitutes use of the trade mark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in the course of trade in the UK.
[168] Secondly, the mere fact that a website is accessible from the UK is not a sufficient basis for concluding that an advertisement displayed there is targeted at consumers in the UK.
[169] Thirdly, the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Conversely, however, evidence that a trader does in fact intend to target consumers in the UK may be relevant in assessing whether its advertisement has that effect.
[170] Fourthly, the court must carry out an evaluation of all the relevant circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, in the case of a website promoting trade-marked products, including the UK in a list or map of the geographic areas to which the trader is willing to dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence. The court may decide that an advertisement is directed at the UK in light of some of the non-exhaustive list of matters referred to by the Court of Justice in Pammer EU: C:2010:740 at [93]. Obviously the appearance and content of the website will be of particular significance, including whether it is possible to buy goods or services from it. However, the relevant circumstances may extend beyond the website itself and include, for example, the nature and size of the trader’s business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.”
Mr Campbell was persuaded by the following arguments that the defendants' website was targeted at the UK as well as the USA:
"a) First, the international nature of the services themselves. By that, they meant that it offered services to international tourists. This was also a factor in Pammer.
b) Secondly, the fact that the Defendants’ website did in fact generate sales enquiries from UK consumers, as shown by the 2 lever arch files worth of disclosure relating to this topic. These consumers did not think “this website is for someone else”. Furthermore, the Defendants actively engaged with these UK sales enquiries in order to profit from them rather than discouraging them. I agree that this shows that the Defendants were content for their website to be viewed by UK consumers as an invitation to contact the Defendants.
c) Thirdly, that the English language version of the website had to be targeted at someone, St Barts being mainly French speaking, and that the only objective difference between the UK and USA was the presence of the single line on the website. Otherwise the Defendants’ approach to the US market was the same as its approach to the UK market, as M. Roche accepted in cross-examination (“yes, absolutely no difference”). For instance the Defendants pointed out the lack of keyword bidding in the UK, the lack of any active attempts to partner with UK based airlines or travel agencies, and the lack of a UK trade mark but these were all true of the US as well. I agree with this."
"a) First, the international nature of the services themselves. By that, they meant that it offered services to international tourists. This was also a factor in Pammer.
b) Secondly, the fact that the Defendants’ website did in fact generate sales enquiries from UK consumers, as shown by the 2 lever arch files worth of disclosure relating to this topic. These consumers did not think “this website is for someone else”. Furthermore, the Defendants actively engaged with these UK sales enquiries in order to profit from them rather than discouraging them. I agree that this shows that the Defendants were content for their website to be viewed by UK consumers as an invitation to contact the Defendants.
c) Thirdly, that the English language version of the website had to be targeted at someone, St Barts being mainly French speaking, and that the only objective difference between the UK and USA was the presence of the single line on the website. Otherwise the Defendants’ approach to the US market was the same as its approach to the UK market, as M. Roche accepted in cross-examination (“yes, absolutely no difference”). For instance the Defendants pointed out the lack of keyword bidding in the UK, the lack of any active attempts to partner with UK based airlines or travel agencies, and the lack of a UK trade mark but these were all true of the US as well. I agree with this."
In answer to Easyway's argument that all its services were performed abroad, Easygroup referred to the decision of Mr Justice Nugee (as he then was) in Easygroup Ltd v Empresa Aerea De Servicios Y Facilitation Logistica Integral SA (Easyfly SA) and another [2020] EWHC 40 (Ch) (14 Jan 2020) which I discussed in Trade Marks and Passing Off - easyGroup Ltd v EasyFly on 15 Jan 2020. In that case, his lordship granted an interim injunction against a Colombian domestic airline called “Easyfly” even though all its services were supplied in Colombia. The recorder agreed with Mr Justice Nugee that the fact that the services were actually delivered abroad is not a defence to an infringement claim if the offer for such services is made in the UK. If it were otherwise there would no infringement “even if Easyfly opened a physical shop on every High Street in the UK so long as it only sold tickets for flights in Colombia.” In this regard, Mr Campbell went a bit further than Mr Justice Nugee. The latter had only to decide whether there was a serious issue to be tried. Mr Campbell had to try the issue. On that point, his decision breaks new ground.
Although there were 17 issues in dispute which the recorder listed at para [7] of his judgment, he said that the defendants' best points were targeting and the likelihood of confusion.
He compared the sign
As for services, he held that the defendants’ airport meet and greet services were not identical to any services for which the EASYJET mark was registered, with the possible exception of “travel agency and tourist services” but those airport meet and greet services were still complementary to other services for which the EASYJET mark was registered, The defendants’ car rental services (which had ceased) were identical to those for which the EASYCAR mark was registered, and their hotel booking services were identical to those for which the EASYHOTEL mark was registered. The only services without a high degree of similarity were the boat rentals. The defendants offered them to consumers on a similar basis as their air charter flights, car rentals and villa rentals. They were an add-on to the same basic business, offered from time to time. The recorder considered them still to have a medium degree of similarity with the transportation services for which the EASYJET mark was registered. He concluded there was a high degree of similarity for the key comparisons, and at least a medium degree of similarity for the rest.
There was very little evidence of actual confusion but Mr Campbell held that there was a likelihood of confusion arising from each type of use made by the defendants, and in relation to each mark. He set out his reasons at para [84]:
"I will not repeat all the points I have made above, but this does not mean I do not take them all into account: I am simply summarising the main ones. First, the Claimants’ marks are word marks which are not restricted to any colour or font. Secondly, the marks are not restricted to low cost services. Thirdly, the marks are not identical to the Defendants’ signs but there is at least a medium degree of similarity. Fourth, although the Defendants’ services are not all identical to those for which the marks are registered there is, on the whole, a high degree of similarity and in other cases it is still medium. Fifthly, the Claimants’ marks benefit from an enhanced reputation through use to the extent indicated above, although I appreciate that this enhanced reputation relates to the services which are of medium rather than of high similarity. Sixthly I consider that the “family of marks” point helps the Claimants given the nature of the family (travel-related marks) and the fact that the Defendants’ business is also travel-related. These outweigh factors pointing the other way such as the descriptive nature of the word “easy” and the lack of evidence of actual confusion. Finally these conclusions apply to both the use of the Defendants’ signs in direct acts and also to use thereof on the website, given my findings about the direct acts and targeting."
There was very little evidence of actual confusion but Mr Campbell held that there was a likelihood of confusion arising from each type of use made by the defendants, and in relation to each mark. He set out his reasons at para [84]:
"I will not repeat all the points I have made above, but this does not mean I do not take them all into account: I am simply summarising the main ones. First, the Claimants’ marks are word marks which are not restricted to any colour or font. Secondly, the marks are not restricted to low cost services. Thirdly, the marks are not identical to the Defendants’ signs but there is at least a medium degree of similarity. Fourth, although the Defendants’ services are not all identical to those for which the marks are registered there is, on the whole, a high degree of similarity and in other cases it is still medium. Fifthly, the Claimants’ marks benefit from an enhanced reputation through use to the extent indicated above, although I appreciate that this enhanced reputation relates to the services which are of medium rather than of high similarity. Sixthly I consider that the “family of marks” point helps the Claimants given the nature of the family (travel-related marks) and the fact that the Defendants’ business is also travel-related. These outweigh factors pointing the other way such as the descriptive nature of the word “easy” and the lack of evidence of actual confusion. Finally these conclusions apply to both the use of the Defendants’ signs in direct acts and also to use thereof on the website, given my findings about the direct acts and targeting."
Having found that Easyway SBH was liable under s.10 (2) of the Trade Marks Act 1994 Mr Recordrr Campbell considered whether they were also liable under s.10 (3). He found that it was for the reasons set out in para [90] of his judgment:
Referring to Lord Neuberger's judgement in Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10, [2015] 2 All ER (Comm) 867, [2015] AC 1229, [2015] 1 AC 1229, [2015] 4 All ER 247, [2015] 2 WLR 694, [2015] 1 Lloyd's Rep 593, [2015] WLR(D) 10 and the Court of Appeal's in MCA Records Inc and another v Charly Records Ltd and others [2001] EWCA Civ 1441, [2002] EMLR 1, [2002] FSR 26, [2003] 1 BCLC 93, [2002] ECDR 37, [2002] BCC 650, the recorder held that Monsieur Roche was jointly liable with his company. He set out his reasons at pata [107]:
"M. Roche was at all times an active participant in the First Defendant’s key decisions, including the choice of name. In addition the Defendants themselves positively averred that M. Roche “spends most of his day doing the day to day operational work of [D1’s] business” rather than seeking to suggest that he exercised a purely constitutional role within the First Defendant such as merely attending its board meetings. Hence he had a close personal involvement in the acts of infringement. I also find that M. Roche is at least a controlling mind of the First Defendant’s business, although he may not be the only one. These matters are sufficient to establish liability, which in the end was not seriously disputed."
"M. Roche was at all times an active participant in the First Defendant’s key decisions, including the choice of name. In addition the Defendants themselves positively averred that M. Roche “spends most of his day doing the day to day operational work of [D1’s] business” rather than seeking to suggest that he exercised a purely constitutional role within the First Defendant such as merely attending its board meetings. Hence he had a close personal involvement in the acts of infringement. I also find that M. Roche is at least a controlling mind of the First Defendant’s business, although he may not be the only one. These matters are sufficient to establish liability, which in the end was not seriously disputed."
Mr Campbell rejected a defence under s.11 (2) that the defendants used a term that indicated the kind, quality, quantity, intended purpose, value, time of production of goods or rendering of services or some other characteristic of the goods or services in accordance with honest practices industrial or commercial matters at [92]. The defendants were not simply saying: “here is an easy way to start your holiday”, by using two words in a descriptive sense, They were using the single word "easyway" to indicate trade origin of their services. Indeed they had even registered the logo mark as a trade mark in France.
He disposed of the def4ence of honest concurrent user on the ground that Easyway SBH had not done enough business in the UK for long enough to establish the defence.
He did, however, allow a limitation defence for any acts committed more than 6 years before the issue of the claim form,
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