Trade Marks - easyGroup Ltd. v Beauty Perfectionists Ltd. and Others

 

Jane Lambert

Chancery Division (Mrs Justice Bacon) easyGroup Ltd v Beauty Perfectionists Ltd and others [2024] EWHC 1441 (Ch) (13 June 2024)

This was an action for trade mark infringement and a counterclaim for partial revocation of one of the claimant's marks. The proceedings began on 5 March 2020 after the UK had left the EU but while EU law continued to apply in the UK in accordance with art 127 (1) of the agreement for the withdrawal of the UK from the EU. The action and counterclaim came on for trial before Mrs Justice Bacon sitting as an EU trade marks court between 13 and 15 and 19 and 20 March and 11 June 2024. She handed down her judgment on 13 June 2024 (see easyGroup Ltd v Beauty Perfectionists Ltd and others [2024] EWHC 1441 (Ch)). By para [173] of her judgment, she held that the defendants' signs did not infringe under art 9 (2) (b) or (c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification) (Text with EEA relevance.) OJ L 154, 16.6.2017, p. 1–99 ("the EU Trade Mark Regulation").  She also partially revoked EU10,584,001 for lack of genuine use limiting the services in class 35 to "in-flight retail services" with effect from 10 Jan 2020.

The Parties

The claimant was easyGroup Ltd. ("easyGroup"),  the owner and licensor of all registered and unregistered intellectual property rights in the companies founded by Sir Stelios Haji-Ioannou that included "easy" in their corporate names.  The first and second defendants, Beauty Perfectionists Ltd ("BPL") and Beauty International Austria Ltd ("BIAL") were online retailers of cosmetics, perfumes, toiletries and related products. BPL had operated www.easycosmetic.de since its formation in 2016. It also ran www.easycosmetic.at until 2018 after which BIAL took over the site. The third defendant, Julie Ann Khammo ("Mrs Khammo"), had been a director of both BPL and BIAL between 2016 and 2021 but she retired before the trial.

The Marks

easyGroup relied on the following registrations:

Number	Mark	Classes
EU10584001	EASYJET	35, 39, 43
EU1232909	EASYJET	39, 42

In her judgment, Mrs Justice Bacon referred to EU10584001 as the "001 mark" and EU1232909 as the "909 mark".

The particulars of claim also claimed EASYCAR, EASYBUS, EASYPROPERTY, EASYHOTEL, EASYGYM and EASYCOFFEE but these were not pursued at trial.

Defendants' Signs

easyGroup alleged that the following signs infringed their trade marks:

• the word "easyCOSMETIC" used since 2008 with no stylization other than the use of lower and upper case ("the easyCOSMETIC word sign"); 
• the following figurative sign which was used from 2009 until 2016 ("the orange/black sign!):

• the following figurative sign used from 2017 to 2022 (the white/black sign):

Issues

The judge noted in para [44] of her judgment that the court had ordered the following issues to be tried:-

"i) Revocation counterclaim – is the 001 mark liable to be partially revoked for non-use pursuant to Article 58 of the Regulation, by limiting certain of the registered class 35 services to "in-flight retail services"?
ii) Identification of the average consumer – for the purposes of the infringement claims, is the average consumer a consumer in the EU (without limitation to any Member State, and including for this purpose the UK), or a consumer in Germany and Austria?
iii) Date for assessment of infringement – what is the relevant date for the assessment of the acts of alleged trade mark infringement?
iv) Family of marks – by the relevant dates, did easyGroup own a family of marks consisting of the work "easy" followed by a second conjoined word referring to the goods and/or services being provided?
v) Infringement under Article 9 (2) (b) – have the defendants infringed the 001 mark contrary to Article 9 (2) (b) of the Regulation, through their use of the signs set out at §26 above?
vi) Infringement under Article 9 (2) (c) – have the defendants infringed the 001 mark and/or the 909 mark contrary to Article 9 (2) (c) of the Regulation, through their use of the signs set out at §26 above?
vii) Article 14 defence – do the defendants have a defence under Article 14 of the Regulation, on the basis that the signs complained of are descriptive and not distinctive, and used in accordance with honest practices in industrial or commercial matters?"

Revocation counterclaim – is the 001 mark liable to be partially revoked for non-use pursuant to Article 58 of the Regulation, by limiting certain of the registered class 35 services to "in-flight retail services"?

The defendants sought to revoke the registration of EU10584001 in relation to the following services in class 35 pursuant to art 58 (2) of the EI Trade Mark Regulation:

"Retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses."

After considering easyGroup's evidence of easyJet's in-flight retail sales of food and drink, cosmetics, perfumes, other toiletries and sunglasses and evidence of advertising on in-flight brochures and (for some but not all products) made between 2014 and 2020, the defendants sought revocation of the mark for the services in class 35 services except in so far as those services were provided to passengers on an aeroplane, described as "in-flight retail".

easyGroup resisted the proposed limitation for two reasons. First, it submitted that the Court of Justice of the European Union had expressly rejected the definition of a subcategory of goods by reference to the outlet in which the goods were sold in Case C-714/18 P ACTC v EUIPO EU: C:2020:573, [2020] ETMR 52, ECLI:EU: C:2020:573, [2020] EUECJ C-714/18P.  Secondly, the claimant argued that online pre-orders would fall outside the proposed amended specification  even though they were commercially significant

Her ladyship considered the appropriate legal principles referring first to art 58 of the EU Trade Mark Regulation:

"1. The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) If, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods and services in respect of which it is registered, and there are no proper reasons for non-use;

 …...............................................................................................................................

2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only."

She directed herself that the principles applicable to determining whether there has been genuine use of a trade mark had been summarized by Lord Justice Arnold at para [106] of his judgment in easyGroup v Nuclei [2023] EWCA Civ 1247:

"i) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark.
ii) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark.
iii) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin.
iv) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns. Internal use by the proprietor does not suffice. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter. But use by a non-profit making association can constitute genuine use.
v) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark.
vi) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use.
vii) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule.
viii) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use."

Lord Justice Arnold added at para [107] that the General Court had stated in para [25] of its judgment in Case T-78/19 Lidl Stiftung & Co KG v European Union Intellectual Property Office  ECLI:EU: T:2020:166, [2020] EUECJ T-78/19, EU: T:2020:166 that genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.  The smaller the commercial exploitation of the mark, the more necessary it is for the proprietor to produce additional evidence to dispel doubts as to the genuineness of its use.

As regards partial revocation under art 58 (2) of the EU Trade Mark Regulation, the learned judge referred to paras [243] to [248] of Lord Justice Kitchin's judgment in Merck v Merck Sharp & Dohme  [2018] ETMR 10, [2017] EWCA Civ 1834 which summarized the guidance of the General Court in Case T-126/03 Reckitt Benckiser (España) v OHIM (ALADIN) EU: T:2005:288, [2005] ECR II-2861, Case T-256/04 Munduoharma AG v OHIM (RESPICUR) EU: T:2007:46, [2007] ECR II-449 and Case T-258/08 Matthias Rath v EUIPO EU: T:2017:22:

"i) First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period.
ii) Secondly, the goods or services for which the mark is registered must be considered. If 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.
iii) Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure that this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way.
iv) Fourthly, these issues are to be considered having regard to the perception of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark."

Mrs Justice Bacon summarized at para [50] of her judgment the Court of Justice's guidance in Case C-714/18 P ACTC v EUIPO EU: C:2020:573 Ferrari and Cases T-221 and 242/22 Pharmaselect v EUIPO (LUTAMAX) EU: T:2023:858:

" i) Since a trade mark proprietor cannot in practice prove that the mark has been used for all conceivable variations of the goods concerned by the registration, the definition of a subcategory of the goods or services cannot be based on any and all commercial variations of similar goods or services. Rather, it requires the identification of goods or services that are sufficiently distinct to constitute coherent categories or subcategories: LUTAMAX §62.
ii) The purpose or intended use of the product or service in question is the essential criterion for defining an independent subcategory of goods or services: ACTC §44; Ferrari §40; LUTAMAX §64.
iii) The facts that goods are aimed at different groups of people and are sold in different shops are not relevant criteria for defining an independent subcategory of goods: ACTC §53. Likewise the particular market segment in which the goods are sold, such as the market for luxury goods of the particular type, is not a relevant defining feature for the purpose of identifying an independent subcategory of the relevant class of goods: Ferrari §§42–50."

Finally, it appeared to the judge from para [39] of Lord Justice Aldous's judgment in Thomson Holidays v Norwegian Cruise Line [2002] EWCA Civ 1828 that the court's determination of a fair specification of the goods or services, having regard to the use made of the mark, does not require the court to adopt a blue-pencil approach. The fair specification may instead be achieved by adding a qualification to the specification. In that case the specification of "arrangement and booking of travel and tours" was qualified by adding "words to the effect that the services were all for package holidays".

Even though neither party had been able to identify a case in which a subcategory of goods or services had been defined by reference to a particular retail channel the judge did not consider that that precluded the definition of a coherent subcategory of in-flight retail services in the case before her. The starting point was that registration for class 35 was not for the goods themselves but for retail services connected with the sale of particular types of goods. Those services consisted of bringing together goods manufactured and supplied by third parties for sale through a retail channel.  She referred to the explanatory note to class 35 of the Nice Convention:

"This class includes, in particular:

• the bringing together, for the benefit of others, of a variety of goods, excluding the transport thereof, enabling customers to conveniently view and purpose those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through websites or television shopping programmes;"

The judge concluded that that classification expressly contemplated that the service might be provided through different categories of retail channel. While the purpose or use of goods sold on an aeroplane might be no different to the purpose or use of the same goods sold in an airport shop the retail service provided on an aeroplane was functionally different from the retail service provided in a shop or by a vending machine. Her ladyship agreed with the defendants that the average consumer would plainly perceive a difference between the purpose and functioning of the two services. Such differences might include the cabin staff's knowledge of the products sold on board, the presentation of the goods to passengers and the captive market. Her ladyship held at para [62] that the provision of the disputed class 35 services on board an aircraft was therefore a sufficiently distinct service in its purpose and function, by comparison with the sale of the relevant products through different retail channels such as retail shops or online and that in-flight sales could be regarded as constituting a coherent subcategory of the class 35 retail services.

Turning to easyGroup's argument that goods that had been ordered in advance over the Internet fell outside the proposed limitation to class 35 the judge found that the quantities ordered online had not been huge.  They amounted to a few thousand pounds compared to tens of millions of pounds for other in-flight sales. Even if advance orders over the Internet had been substantial there was no reason why they should not fall within the proposed specification,  Her ladyship held at para [71] that a specification limited to in-flight retail services would not, exclude online pre-orders.

It was common ground that the date from which any revocation should run would be the day following the 5 years from the date on which the mark was placed on the register.  As registration took place on 9 Jan 2015; the 5 years expired on 9 Jan 2020. Partial revocation of EU10584001 should therefore take effect from 10 Jan 2020.

Identification of the average consumer – for the purposes of the infringement claims, is the average consumer a consumer in the EU (without limitation to any Member State, and including for this purpose the UK), or a consumer in Germany and Austria?

Mrs Justice Bacon directed herself at [74] that the "average consumer" must be a consumer of the relevant goods or services who is both 

(i) familiar with the trade mark and 

(ii) exposed to, and likely to rely upon, the sign: (per para [275] of Mr Justice Arnold's judgment in Sky v Skykick UK [2018] EWHC 155).

Referring to para [200] of  Chief Insolvency Judge Briggs's judgment in easyGroup Ltd v Easylife Ltd and another (Rev2) [2021] EWHC 2150 (Ch) (29 July 2021) she observed that the average consumer must be a consumer of the goods or services in relation to which the signs complained of had been used,  The parties agreed that:
(i) the infringement analysis should consider German or Austrian consumers and UK consumers, and that
(ii) in so far as the court finds a difference in the likelihood of confusion between German and Austrian consumers and UK consumers, that might lead to a limitation of the territorial scope of any injunctive relief. 

Date for assessment of infringement – what is the relevant date for the assessment of the acts of alleged trade mark infringement?

The judge found that the easyCOSMETIC word sign had been used since 2008, the orange/black sign between 2009 and 2016 and the white/black sign between 2017 and 2022.  

Referring to paras [17] and [18] of Case C-145/05 Levi Strauss v Casucci [2006] ECR I-370 and para [121] of easyGroup v Easy Live [2022] EWHC 3327 (Ch) her ladyship noted that the relevant date for assessment of whether the use of a sign infringes a trade mark is usually the date that the use of the sign commenced.  However, where the use of a sign precedes the publication of the trade mark, the earliest possible date for assessment of the infringement is the publication date of the allegedly infringed mark.

 

Applying these principles the judge held that the dates for the assessment of infringement of EU1232909, pursuant to art 9 (2) (c) were the dates on which the use of the disputed signs commenced, that is to say, 2008 for the easyCOSMETIC word sign, 2009 for the orange/black sign and 2017 for the white/black sign. The dates for the assessment of infringement of EU10584001 pursuant to art 9 (2) (b) and (c), were 2012 for the easyCOSMETIC word sign and orange/black sign and 2017 for the white/black sign.

 Family of marks – by the relevant dates, did easyGroup own a family of marks consisting of the word "easy" followed by a second conjoined word referring to the goods and/or services being provided?

Mrs Justice Bacon observed in para [82] of her judgment that where a claimant has used a "family" of trade marks with a common feature, and the disputed sign shares that common feature, there may be a greater likelihood of confusion for the purposes of a claim under art  9 (2) (b), or of a link between the sign and the trade mark for the purposes of a claim under art 9 (2) (c) of the EU Ttrade Matk Regulation. Relying on paras [79] to [81] of the judgment in Case T-287/06 Miguel Torres v OHIM [2008] ECR II-3817, paras [23] and [86] of Case T-301/09 IG Communications v OHIM EU: T:2012:473 and para [98] of T-175/22 Novartis v EUIPO EU: T:2023:135, the judge noted that the existence of a family of marks may be a factor in determining the likelihood of confusion where the marks that are said to form part of a family are in actual use and the characteristics of the family of marks are to be found in the allegedly infringing sign.

The claimant contended that marks that contained the prefix "easy" as in easyJet, easyHotel, easyCar/easyRentacar, easyBus, easyGym, easyProperty, easyCoffee, easyEverything/easyInternetCafé, easy4men, easyValue, easyWatch, easyCruise, easyMoney, and easyCinema constituted a "family of marks." The question for the judge was whether the alleged family of marks was apparent in Austria, Germany and the UK on the dates for the assessment of infringement which I mentioned in my discussion of the previous issue.

There was no dispute that easyJet had a substantial reputation in all three countries at all relevant times. Businesses that used the "easy" marks mentioned above established themselves in the UK but not in Austria. The only businesses in Germany other than easyJet that used an "easy" mark were "easyHotel" which had two properties in Germany from 2011 and easyEverything and easyInternetCafé which had two locations. The judge held that easyGroup could rely on the existence of a family of marks at the various times of assessment of infringement in the UK but not in Austria or Germany.

However, she did not accept easyGroup's claim that its use of a family of marks indicated to the average UK consumer that the use of a mark comprising "easy" before words alluding to goods or services was a reference to goods or services associated with, approved, authorized or endorsed by easyGroup. "Easy" is a commonplace adjective and there are many companies in the UK which use "easy" in their branding but are unconnected with easyGroup,  These include several in which the courts have found there to be no infringement such as EasyRoommate, easylife, Easy Live Auction and EasyOffices.

Her ladyship noted that easyGroup requires its licensees to adopt the same colouring and stylization and accepted that it is relevant to take account of the association of the easy family marks with orange colouring in addressing the infringement issues. The evidence did not establish that simply using the word "easy" conjoined with a second word or using orange and/or white in the text or background would be perceived by UK or other consumers as indicating an easyGroup brand.

Infringement under Art 9 (2) (b) – have the defendants infringed EU10584001 contrary to Art 9 (2) (b) of the Regulation, through their use of the signs mentioned above?

The learned judge referred to art 9 (2) (b) of the EU Trade Mark Regulation:

"Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of the EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade,, in relation to goods or services, any sign where:
................................................................
(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark....."

Citing para [7] of Lord Justice Arnold's judgment in Liverpool Gin Distillery v Sazerac [2021] EWCA Civ 1207, she said that in order to establish infringement under art 9 (2) (b), six conditions must be satisfied: 

(i) there must be use of a sign by a third party within the relevant territory; 

(ii) the use must be in the course of trade; 

(iii) it must be without the consent of the proprietor of the trade mark; 

(iv) it must be of a sign which is at least similar to the trade mark; 

(v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and 

(vi) it must give rise to a likelihood of confusion on the part of the public.

There was no issue as to conditions (i) to (v). It was not disputed that the easyCOSMETIC signs were at least similar to the trade marks relied upon by easyGroup or that the services supplied by the easyCOSMETIC business were at least similar to the services for which EU10584001 was registered. The defendants did not suggest that the partial revocation of that mark would make any difference to the analysis. The only issue was the likelihood of confusion under condition (vi).

The judge noted that the likelihood of confusion is determined by certain decisions of the Court of Justice of the European Union which were set out in para [10] of Iconix v Dream Pairs [2024] EWCA Civ 29:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."

She added at para [112] of her judgment that where there is a family of marks it will be taken into account in assessing the likelihood of confusion.

She then turned to direct and indirect confusion, She explained at [113] that direct confusion is where consumers mistake the defendant's sign for the claimant's trade mark and indirect confusion is where they do not mistake the sign for the mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the mark or from an undertaking that is economically linked to the undertaking responsible for goods or services denoted by the trade mark. It was not suggested that the average consumer in the UK, Germany or Austria would mistake the defendants' signs for the claimant's mark. easyGroup contended that the average consumer had been led to believe that easyCOSMETIC was a business that was economically linked to the undertaking responsible for the services registered under the easyJet mark.

Her ladyship compared the mark's specified services after partial revocation and the services that were supplied by the defendants at [123]:

"From the date of revocation (10 January 2020) the comparison is between in-flight retail of cosmetics and fragrances under the 001 mark, and the defendants' online retail of cosmetics and fragrances through their German and Austrian websites. Those services are similar but only to a moderate degree, given the very different nature of the retail channels used in each case. As the defendants rightly point out, in-flight retail services are perceived as ancillary to the core transport services provided by the relevant airline, and the average consumer would not expect to see airlines engaging in the online retail of goods outside the context of the flight."

Her comparison of signs and mark was much more detailed.  She set out the claimant's contentions in [124] and considered them individually between para [125] and para [140]. She said at [141]:

"Likelihood of confusion overall. The matters set out above disclose factors that point in both directions. The "easy" element of the 001 mark (which easyGroup contends is the dominant component of that mark) has no inherent distinctive character, and the family reputation is not relevant for German/Austrian consumers. For UK consumers the family reputation is relevant, although none of the easy family brands are related to the retail of consumer goods such as cosmetics and fragrances. There is some visual and conceptual similarity between the 001 mark and the easyCOSMETIC signs, and the font style of the figurative signs and the orange colouring in the orange/black sign bears some similarity to the stylisation of the easy family of marks, and the colouring associated with the 001 mark. I also bear in mind that the defendants' services were identical to the registered class 35 services for the 001 mark, until January 2020, and of moderate similarity thereafter. Those similarities are, however, in my judgment outweighed by the clear visual and conceptual differences between the marks, and the context of use by the defendant which also points away from a likelihood of confusion. It is also significant that despite extensive searches of many millions of emails on both sides, and many years of parallel trading, no instance of genuine confusion has been identified."

Taking account of all of those factors, she did not consider there to have been a likelihood of indirect confusion between the defendants' signs and the EU10584001 mark.   It was therefore unnecessary to consider whether there had been honest concurrent user.  Had she been called upon to determine the issue she would have decided it in favour of the defendants. She said at [145]:

"easyGroup was aware of the easyCOSMETIC business since at least 2011, but after an initial complaint in May 2011 it then took no further action until June 2019. That is indicative of the fact that the defendants' business was having no real impact on easyGroup or its licensees; and there is certainly no evidence that easyGroup or any of its licensees have been harmed by the easyCOSMETIC business. easyGroup argued that it was justifiable for it to have reconsidered the risk and damage to its intellectual property rights as the scale of the business increased since 2011. In 2011, however, the defendants' turnover was already over €3.7m, and it was therefore already a substantial business. The business continued to grow rapidly, reaching almost £17m in 2014, over €55m in 2017 and over €72m in 2018, during all of which time easyGroup remained silent. (It appears that the turnover figures include some Swiss turnover, but the likely scale of that does not change the analysis.) It is also relevant that, as set out above, there is no evidence of customer confusion between the easyCOSMETIC and EASYJET signs during the many years in which they have been used concurrently, with trade on a very large scale on both sides. It is therefore apparent that the defendants' honest concurrent use has not in any way adversely affected the functions of the 001 mark."

Thus, it would have been yet another reason to find that there was no likelihood of confusion,

Infringement under Article 9 (2) (c) – have the defendants infringed the  EU10584001 mark and/or the EU1232909 mark contrary to Article 9 (2) (c) of the EU Trade Mark Regulation, through their use of the defendants' signs.

Mrs Justice Bacon referred to art 9 (2) (c) of the EU Trade Mark Regulation:

"Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of the EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
…
(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark."

She directed herself that  Lord Justice Arnold had said at para 55 of his judgment in Match v Muzmatch [2023] EWCA Civ 454 that 9 conditions must be satisfied in order to establish infringement under art 9 (2) (c) of the EU Trade Mark Regulation:

(i) The registered trade mark must have a reputation in the relevant territory;
(ii) there must be use of a sign by a third party in the relevant territory;
(iii) the use must be in the course of trade;

(iv) it must be without the consent of the proprietor; 

(v) it must be of a sign which is identical with or similar to the trade mark; 

(vi) it must be in relation to goods or services; 

(vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; 

(viii) it must give rise to one of three types of injury, namely, 

(a) detriment to the distinctive character of the trade mark, 

(b) detriment to the repute of the trade mark, or 

(c) unfair advantage being taken of the distinctive character or repute of the trade mark; and 

(ix) it must be without due cause:

There was no issue as to conditions (i) to (vi). The disputed conditions were (vii) to (ix). In relation to condition (viii), easyGroup focused on (a) and (c), namely the alleged detriment to the distinctive character of the EU10584001 and/or EU1232909 marks, and the alleged unfair advantage being taken of the distinct character or repute of those marks.

Her ladyship considered first whether there was a link between its marks and the defendants' signs.  Referring to para [63] of Case C-252/07 Intel v CPM EU: C:2008:655, [2008] ECR I-8823 and para [21] of Lidl v Tesco [2024] EWCA Civ 262, she noted that there would be a link between the sign and the trade mark if the sign would call the trade mark to mind for the average consumer.  In Intel the Court of Justice said that the existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case.  Such factors will include 

(i) the degree of similarity between the mark and the sign; 

(ii) the nature of the goods or services for which the mark and sign were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; 

(iii) the strength of the earlier mark's reputation; 

(iv) the degree of the earlier mark's distinctive character, whether inherent or acquired through use; and 

(v) the existence of the likelihood of confusion on the part of the public.   As set out above, where a family of marks is established, that will be relevant in considering these factors.

Next, the judge considered what was meant by "detriment to the distinctive character of the trade mark." Referring to para [29] of Intel, she said detriment is caused when the mark's ability to identify the goods or services for which it is registered and used, as coming from the proprietor of that mark, is weakened by the use of the later sign.  Citing para [67] of Intel she noted that the more immediately and strongly the earlier mark is brought to mind by the disputed sign, the greater the likelihood that there is detriment to the distinctive character of the mark.  According to paras [77] and [78] of Intel, detriment is proved by a change in the economic behaviour of the average consumer of the goods or services for which the mark was registered caused by the use of the disputed sign.   It is enough that there is a serious likelihood that such a change will occur in the future. It is unnecessary to show that the proprietor of the accused sign draws a real commercial benefit from the distinctive character of the allegedly infringed mark.  Evidence of actual detriment need not be shown.  Referring to para [120] of Lord Justice Kitchin's judgment in Comic Enterprises v Twentieth Century Fox [2016] EWCA Civ 41 which in turn referred to paras [42] to [43] of Case C-383/12 Environmental Manufacturing v OHIM EU: C:2013:741, §§42–43 she noted that it is enough to show that there is a serious risk of detriment provided that such risk is more than mere supposition 

Turning to the third type of injury in condition (viii), the judge observed at para [156] that the approach to determining whether the use of a sign takes unfair advantage of a mark was set out in Case C-487/07 L'Oréal v Bellure [2009] ECR I-5185 at the paragraph numbers in square brackets: 

"In particular:
i) That concept covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation: [para [41]].
ii) In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. The more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark: [para [44]].
ii) Where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark: [para [49]]."

Referring to para [39] of Intel the learned judge said that where the proprietor of an earlier mark has shown that there is either actual and present injury to that mark or that there is a serious risk that there will be such injury it is for the owner of the accused sign to show that there is due cause for the use of that sign.  The Court of Appeal said at para [121] of Comic that involves balancing the interests of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their products and services.  The Court of Justice held at para [60] of Case C-65/12 Leidseplein Beheer v Red Bull EU: C:2014:49, that relevant factors include how the sign has been accepted by, and what its reputation is with, the relevant public, the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered, and the economic and commercial significance of the use for that product of the sign which is similar to that mark.

Her ladyship did not consider that the "easyCOSMETIC" word sign would create a link to the claimant's marks in the mind of the average consumer. The sole linking factor is the use of the word "easy" at the start of the marks and the sign. She had already found that there was no likelihood of confusion for this or the other two disputed signs,  The defendants' retailing services were very different from the airline services for which the claimant's marks had a reputation and enhanced distinctive character.  

The analysis of the white and black sign was not materially different.  A slightly heavier font was used for the word "easy" which had some modest similarity to the Cooper Black font used for the easy family of marks but that was counterbalanced by other visual elements such as differences in colour and capitalization.

The only sign where there was arguably a link was the orange/black sign where there were similarities in colour and stylization between the claimant's marks and the wider family of marks.

In view of the judge's finding on links between the defendants' signs and the claimant's marks, any detriment to those marks would have to have resulted from the defendants' use of the orange and black sign.  The learned judge could find no evidence of any actual or likely change in consumer behaviour in respect of any of the marks. The claimant had suggested that there could be damage to the strength of the family of marks if third parties used the same or similar stylization but that was unlikely given the differences in stylization between the signs and marks in the family.  It was also irrelevant as art 9 (2) (c) was concerned with detriment to the distinctive character of marks rather than to the reputation of families of marks,

As for "unfair advantage" the claimants submitted that the link between the orange and black sign and the marks allowed the defendants to "trade on the trust that people have in the easy family of brands" such that customers might choose the defendants' services when they might not otherwise have done so.  Mrs Justice Bacon described that submission as the high point of easyGroup's analysis but could find no evidence to support it.

Given her findings on the absence of links between most of the signs and the marks and the lack of evidence of detriment or unfair advantage, her ladyship did not have to consider due cause.  Had she been required to do so, she would have considered honest concurrent use to have been relevant.

For all of these reasons, the judge held that there had been no infringement under art 9 (2) (c) of the EU Trade Mark Regulation.

Article 14 defence – do the defendants have a defence under Article 14 of the Regulation, on the basis that the signs complained of are descriptive and not distinctive, and used in accordance with honest practices in industrial or commercial matters?

Art 14 of the Regulation provides:

"1. An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(a) the name or address of the third party, where that third party is a natural person;
(b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
(c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.
2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters."

The defendants had pleaded a defence based on this article but it was unnecessary for the judge to consider it as she had already dismissed the claims under art 9 (2) (b) and art 9 (2) (c).

Comment

This is a very thorough, closely reasoned and documented judgment on several important issues in trade mark law.   Given the similarities between the RU Trade Mark Regulation and the Trade Marks Act 1994, it is strong persuasive authority on the same issues in English law.  As it was launched shortly before EU law ceased to apply to the UK it will also be one of the last judgments of an English court on the EU Trade Mark Regulation.   For those reasons, it will be mined regularly for skeleton arguments.

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