Trade Marks and Passing off - easyGroup Ltd v Easyfundraising Ltd.

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Jane Lambert

Chancery Division (Mr Justic Fancourt) easyGroup Ltd v Easyfundraising Ltd and others [2024] EWHC 2323 (Ch) (11 Sept 2024)

This was a number of claims and counterclaims between the claimant, easyGroup Ltd  ("easyGroup"), and the defendants, Easyfundraising Ltd, ("EFL"), The Support Group (UK) Ltd., Ian Woodroffe ("Mr Woodroffe") and Palatine Private Equity Ltd ("Palatine"). The claims were for trade mark infringement and passing off. The counterclaims were for revocation and invalidity of easyGroup's marks.

The Parties
easyGroup administers or licenses the use of trade marks consisting of the adjective word "easy" which is usually in lowercase letters followed by the description of a business activity beginning with a capital letter as in easyJet, easy easyHotel or easyRentacar.  easyGroup owns and manages a large number of those marks which are used by its associate companies.

EFL describes itself as "the UK’s biggest charity shopping site". It describes its business as follows on the "How it works" page of its website:

"easyfundraising partners with over 7,000 brands who will donate part of what you spend to a cause of your choice. It won't cost you any extra. The cost is covered by the brand.

Brands pay us a commission because when you start your shop from the easyfundraising website or app, they can see we sent you to them. If you make a purchase, a commission is generated, and we turn that into a donation - magic!"

The second defendant owns shares in EFL.  Mr Woodroffe founded EFL.  Palatine manages funds that have been invested in EFL.

easyJet's Marks

easyJet held the following registered trade marks:

Mark	Goods or Services	Number
EASYJET	Class 39: transport, vacations, travel, and tourism	UK2016785
easyHotel / EASYHOTEL	Class 42: hotel services; providing hotel accommodation; reservation services for hotel accommodation	UK2246286B
easy.com	Class 38: electronic mail services	UK2247942
	Class 36: financial services	UK2265184
	Class 35:  "the commercial administration and management of the licensing of goods or services, including the administration and management of brand licences; the provision of general support, marketing, advertising, administration and management services to licensees of goods or services"	UK2294415
	Class 35: advertising services; promotion services; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase these goods from a general merchandise catalogue by mail order or by means of telecommunications; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site)	UK903367695
EASYJET	Class 35: 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, jewellery [sic], watches, purses, purses, wallets, pouches and handbags, games	UK910584001
	Class 38: internet access services; internet services provider (ISP) services	UK3143777
easy life / Easylife	Class 35: advertising and marketing services; retail services including online retailing, ... retail services conducted by mail order, all connected with the sale of ....[various retail goods] through the medium of broadcasting... [various retail goods]	UK3532904

The judge referred to:

• trade mark number UK2016785 as "the first easyJet mark";
• trade mark number  UK903367695 as "the first easylife mark";
• trade mark number UK910584001 as "the second easyJet mark;" and
• trade mark number UK3532904 as "the second easylife mark".

EFL's Signs

easyGroup alleged that the following signs infringed the above trade marks:

Sign	Use
	Nov 2005 to Sept 2015
	Sept 2015 to June 2022
	June 2022 to present
EASYFUNDRAISING

Actions and Counterclaims

These proceedings came on before Mr Justice Fancourt on 14, 17, 18, 21 and 24 June 2024.  His lordship handed down judgment on 11 Sept 2024 in easyGroup Ltd v Easyfundraising Ltd and others [2024] EWHC 2323 (Ch).  In para [39] of his judgment he listed the claims and counterclaims as follows:

"i) A counterclaim by EFL for revocation of the first easylife mark and the easy.com mark for non-use, and revocation of the easyHotel mark and the second EASYJET mark in part only for non-use.
ii) A claim for infringement of the Claimant's marks (except the easyMoney, EASY NETWORKS, second EASYJET and second easylife marks) under s.10 (2) of the Trade Marks Act 1994 ("s.10 (2)") as at November 2005 by use of the EF Sign, and as at May 2007 by use of the easysearch sign, or the plain word Signs.
iii) The claim for infringement of the same marks under s.10 (2) as at September 2009 by use of the @easyuk handle.
iv) The claim for infringement of the same marks, the second EASYJET mark and the Easy Networks mark under s.10 (2) as at September 2015 by use of the 2015 EF Sign;
v) The claim for infringement of those same marks and the second easylife mark under s.10(2) as at June 2022 by use of the 2022 EF Sign;
vi) The claim for infringement of the Claimant's marks (except the Easy Networks mark, the easy.com mark, the second EASYJET mark and the second easylife mark) under section 10 (3) of the 1994 Act ("s.10(3)") by the EF Sign as at November 2005 and by the easysearch sign as at May 2007;
vii) The claim for infringement of the same marks under s.10(3) as at September 2009 by the @easy.uk handle;
viii) The claim for infringement of the same marks, the second EASYJET mark and the Easy Networks mark under s.10 (3) as at September 2015 by use of the 2015 EF Sign;
ix) The claim for infringement of those same marks and the second easylife mark under s.10 (3) as at June 2022 by use of the 2022 EF Sign;
x) The claim for passing off EFL's business as being or being associated with that of the Claimant's licensees;
xi) The claim of joint and several liability against Palatine
xii) The counterclaim for invalidity of the Easy Networks mark and the second easylife mark.
xiii) The claim for invalidity or revocation of the first EF Mark and the second EF Mark."

Counterclaim for Revocation
The judge considered first the counterclaim for revocation of the following marks:

• the first easylife mark;
• easy.com; 
• easyHotel for "reservation services for hotel accommodation"; and 
• the second easyJet mark for "retail services" other than a subcategory of "inflight retail services."

S.46  of the Trade Marks Act 1994 provides:

"(1) The registration of a trade mark may be revoked on any of the following grounds –
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(2) For the purposes of subsection (1) 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 (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor).
.....
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only."

His lordship referred to paras [106] and [107] of Lord Justice Arnold's judgment in EasyGroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247; [2024] FSR 9 for the essential principles that apply in a revocation case:

"[106] Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second-hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: ......
(2) 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 .......:
(3) 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 .....
(4) 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 underway, 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 ...
(5) 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.....
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark ....
(7) 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 .....
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use .....

[107] The trade mark proprietor bears the burden of proving genuine use of its trade mark: see section 100 of the 1994 Act and Ferrari at [73]-[83]. The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved 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 ....."

As for s.46 (5) of the Act, Mr Justice Fancourt referred to paras [245] to [248] of Lord Justice Kitchin's judgment in Merck KGaA v Merck, Sharp & Dohme [2017] EWCA Civ 1834; [2018] ETMR 10:

"[245] First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period.
[246] 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.
[247] 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 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.
[248] Fourthly, 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. 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."

easyGroup admitted that it had not used the first easylife mark in the registered form but relied on its use of variant forms of the mark, pursuant to s.46 (2). In this regard the judge referred to para [119] to para [122] of Mr Justice Arnold's judgment in Walton v Verweij Fashion [2018] EWHC 1608 (Ch); [2018] ETMR 34:

"[119]. ... The CJEU stated in Specsavers International Healthcare Ltd v Asda Stores Ltd (C-252/12) [EU: C:2013:497], [2013] ETMR 46 ('Specsavers (CJEU)') at [29] that the objective of what is now art.18 (1) (a) of the Regulation was:

'by avoiding imposing a requirement for strict conformity between the form used in trade and the form in which the trademark was registered, ... to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned.'

[120] In BUD and BUDWEISER BUDBRAU Trade Marks [2002] EWCA Civ 1534; [2003] RPC 25 Lord Walker of Gestingthorpe (with whom Pill LJ agreed) held that the correct approach to s.46 (2) of the 1994 Act, which corresponds to art.15 (2) (a) of the Regulation, was as follows:

'[43]. ... The first part of the necessary inquiry is, what are the points of difference between the mark as used and the mark as registered? Once those differences have been identified, the second part of the inquiry is, do they alter the distinctive character of the mark as registered?
[44] The distinctive character of a trade mark (what makes it in some degree striking and memorable) is not likely to be analysed by the average consumer, but is nevertheless capable of analysis....
[45] Because distinctive character is seldom analysed by the average consumer but is capable of analysis, I do not think that the issue of 'whose eyes? - registrar or ordinary consumer?' is a direct conflict. It is for the registrar, through the hearing officer's specialised experience and judgement, to analyse the 'visual, aural and conceptual' qualities of a mark and make a 'global appreciation' of its likely impact on the average consumer, who:

'normally perceives a mark as a whole and does not proceed to analyse its various details.'
.....

[121] As this indicates, and as the recent decision of CJEU in European Union Intellectual Property Office v Cactus SA (C-501/15) [EU: C:2017:750], [2018] E.T.M.R. 4 at [68]-[71] confirms, the normal approach to the assessment and comparison of distinctive character applies in this context.
[122] As the case law of the General Court makes clear, alteration or omission of elements which are not distinctive is not capable of altering the distinctive character of a trade mark: see Sony Computer Entertainment Europe Limited v The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-690/14) [EU: T:2015:950] at [45]. Furthermore, when a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter: see Sony at [49]. Accordingly, it is possible in an appropriate case for use of the word element on its own to constitute use of the trade mark: see Sony at [51]."

Mr Justice Fancourt concluded at para [133] of his judgment:

"The normal approach to the assessment and comparison of distinctive character, to which Lord Walker referred, is to consider the matter through the eyes of the average consumer of the goods or services in question, by reference to the overall impression created by the mark, bearing in mind its distinctive and dominant components, which may be visual, aural or conceptual (see further at [196] below)."

easyGroup referred his lordship to ACTC GmbH v EUIPO (C-714/18) [EU: C:2020:573]; [2020] ETMR 52, for the following proposition as regards partial revocation for non-use:

"With regard to the relevant criterion or criteria to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently, the court has held, in essence, that the criterion of the purpose and intended use of the goods or services at issue is an essential criterion for defining an independent subcategory of goods ...."

With these principles in mind, the judge turned to the case for revocation of the trade mark easyHotel in relation to "reservation services for hotel accommodation".  His lordship found that the mark had been used in relation to easyHotel properties but not in respect of hotels owned by third parties.   EFL argued that reservation services for hotel accommodation could only refer to bookings in third-party hotels because booking in easyHotel properties was already covered by "providing hotel services" and "providing hotel accommodation which was already part of the specification.  easyGroup submitted that there was no reason why separate descriptions of services in a specification should be interpreted as mutually exclusive.  The judge agreed with easyGroup observing that EFL's contention would leave easyHotel's booking service unprotected.  He concluded in [139] that "even though during the relevant period easyHotel has only used the mark in connection with providing reservation services for bookings in its own hotels, that use was a genuine use of the mark for reservation services for hotel accommodation".  Accordingly, he dismissed the counterclaim for partial revocation of the easyHotel mark.

His lordship accepted EFL's submission that the registration of easyJet for "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, jewellery, watches, purses, purses, wallets, pouches and handbags, games" should be partially revoked because those items could only be bought by passengers on easyJet flights. Such goods could be ordered over the internet and paid for in advance but they had to be collected on an aeroplane. Readers will recall that the same issue arose in easyGroup Ltd v Beauty Perfectionists Ltd and others [2024] EWHC 1441 (Ch) (13 June 2024) which I discussed in Trade Marks - easyGroup Ltd. v Beauty Perfectionists Ltd. and Others on 30 June 2024. In that case, Mrs Justice Bacon limited the specification to the provision of sales of those items on an aircraft.   Mr Justice Fancourt allowed a slightly wider modification to "retail services provided to airline passengers connected with ..... [as per registered specification]". To that extent, the counterclaim succeeded.

Save for providing free "easy.com" email addresses and a website linking to other "easy" brand businesses there had been no use of the easy.com trade mark.  The judge noted that giving away free email addresses did not of itself mean that there had been no commercial exploitation. Had the intention been to develop the business by for example selling broadband packages there would have been genuine use for commercial purposes. There had been no real commercial exploitation of the mark by easyGroup itself and the fact that other businesses benefited from the links was irrelevant.   He therefore revoked the registration in its entirety.

The first easylife mark had never been used in its registered form but easyGroup claimed that it had been used in the following variants:

A The Tickball Variant
B The Tickball Everyday Variant
C The Tickball Lifestyle Variant
D The Text Variant	EASYLIFE
E The Text Lifestyle Variant	EASYLIFE LIFESTYLE SOLUTIONS

The judge considered first whether the variants altered the distinctive character of the mark.  In his view, each of the three "Tickball" variants created visually a different overall impression from the mark. The design has changed significantly in that the prominent elements of the new designs were the word, the more decorative font and the outsize Tickball motif. The changes in or omission of the strap line in all cases except the Tickball Lifestyle Variant, the omission of the triangle or pyramid, the marked change of font, and especially the inclusion of the Tickball in the three Tickball variants all contributed to a different impression. What was distinctive of all three of the Tickball variants was the word "easylife" and the Tickball.  The change of font and the presence or absence of strap lines were somewhat less distinctive.  Overall the three Tickball variants had a different distinctive character, given that the visual appreciation of them would be the most prevalent form. The difference was derived from the visual and conceptual combination of the word "easylife" and the strong Tickball motif. They were all distinctive in a different way from the registered mark.

The differences between the registered mark and the Text Variants were the omission of the strapline and the triangle or pyramid, and the stylized design of the mark.  Relying on the decisions of the General Court in T-792/22 Quatrotec Electronica, SL v EUIPO  EU: T:2024:69, ECLI:EU: T:2024:69, [2024] EUECJ T-792/22 and the Court of Appeal in Anheuser-Busch Inc v Budejovicky Budvar Narodny Podnik [2003] RPC 25, [2002] EWCA Civ 1534, easyGroup submitted that the use of words alone, or words and a small element of design, can be a variant form that preserves a registered mark. The judge replied that while the principle was not in doubt its application was likely to depend on the circumstances of use of the variant, on how strongly or weakly distinctive the words were as part of the original device, and how distinctive were the elements that had been omitted or altered.  His lordship distinguished Quatrotec and BUD on their facts. This was not a case of minor variations to a registered mark in order to accommodate particular locations of branding and what they could sensibly accommodate.  He concluded that the first easylife mark should be revoked for non-use with effect from a date to be determined at a consequentials hearing.

Readers will recall that Mr Justice Fancourt reached a completely different conclusion from Mr Nicholas Caddick KC with regard to the same registered mark and the same variants in easyGroup Ltd v Easy Live (Services) Ltd and others [2024] EWHC 2282 (Ch) (4 Sept 2024).  I considered Mr Caddick's judgment in Trade Marks - easyGroup Ltd v Easy Live (Services) Ltd on 10 Sept 2024.  Mr Justice Fancourt was shown a copy of Mr Caddick's judgment after he had circulated a draft of his own judgment to the parties in this case.  He said at [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."

He then considered whether:

i) there was evidence that the Tickball Lifestyle Variant had been used at all in connection with "bringing together for retail" services;
ii) there was evidence of any commercial exploitation of the variants in connection with advertising and marketing services; and
iii) the registration of the mark in connection with advertising and promotional services should be cut down to advertising or promotion by way of inserts in printed catalogues;

had he reached a different conclusion on revocation for non-use.  He found no evidence to support use of the variant forms in respect of the bringing together for retail" services but there was evidence of use in relation to advertising and promotional services.   His lordship considered at para [190] that a fair specification of the first easylife mark as regards advertising and promotion services would have been "providing advertising or promotional space in printed publications".

Infringement under s.10 (2)

Having revoked easy.com and the first easylife mark, Mr Justice Fancourt considered whether the defendants' signs infringed the first easyJet mark and the easyHotel and easyGroup marks, His lordship referred to s.10 (2) (b) of the Trade Marks Act 1994:

"A person infringes a registered mark if he uses in the course of a trade a sign where because –
............................................
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."

He said that the requirements for establishing liability under that section were set out by Lord Justice Arnold in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097 at para [26]:

"(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."

EFL conceded that the signs and registered marks were similar because of the use of the word "easy" but there was no agreement as to the extent of that similarity.  The main issues in dispute were whether the services were identical or similar and the likelihood of confusion. The judge referred to the following principles for determining the likelihood of confusion which Lord Justice Arnold had listed in para [27] of his judgment in Match Group LLC v Muzmatch Ltd.:

"(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."

Referring to paras [45] and [87] of Lord Justice Kitchin's judgment in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19, Mr Justice Fancourt added at [197] that it is necessary in the context of an infringement claim to consider the actual use of the sign complained of.  Citing para [77] of Lord Justice Arnold's judgment in EasyGroup Ltd v Nuclei Ltd., he added in para [198] of his own judgment that the absence of evidence of actual confusion is not necessarily fatal to a claim under s.10  (2) though the longer the use complained of has gone on in parallel with use of the mark without any such evidence emerging, the more significant that absence is likely to be. In assessing the significance of the absence of actual confusion, it is relevant to consider what opportunity there has been for confusion to appear and what opportunity for any such confusion to have been detected.  Noting paras [115] and [116] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd. he said that honest concurrent use of the sign complained of is not a defence as such to a claim for trade mark infringement under s.10 (2), but it may be relied upon as a factor in the infringement analysis. He observed that Lord Justice Arnold had said at para [119] of that case that honest concurrent use may exceptionally lead to a conclusion of no infringement, despite a small level of actual confusion but otherwise, it is up to the defendant to establish that by reason of the honest concurrent use, there has been no adverse effect on any of the functions of the trade mark.

The learned judge considered the judgment of Mr Justice Arnold as he then was in W3 Ltd v EasyGroup Ltd [2018] EWHC 7 (Ch); [2018] FSR 16  and his later judgment as a Lord Justice in  EasyGroup Ltd v Nuclei Ltd. since easyGroup relied on those cases to support its argument on the identical nature of EFL's services and the specified services.  He held at [202] that the decisions in W3 and Nuclei did not establish any proposition of law on this issue beyond the principle that a business will be taken to be providing a particular service using a sign if the average consumer would be left with the impression that that business shared the responsibility for the quality of the service, even though it was provided principally by another business. Otherwise, they are decisions on their own particular facts.

Having set out the legal principles, the judge directed himself to consider 

• first the degree of similarity of the easyfundraising sign, the easysearch sign and the plain word signs on the one hand and easyGroup's remaining marks on the other, and then  
• whether EFL was providing identical or similar services to those specified in the marks. 

The final question would be whether the degree of similarity was such that there was a likelihood of confusion in November 2005.

His lordship found a low degree of similarity between "easyfundraising" and the first easytJet mark and the easyJet word mark.  All that they had in common was the word "easy" and the conjoining of two words without a gap, the second conjoined word being descriptive of the businesses that the mark and signs were identifying.  He rejected easyGroup's contention that "easy" was the dominant feature for the reasons given in W3 Ltd v EasyGroup Ltd. and easyGroup Ltd v Beauty Perfectionists Ltd and others.

He reached the same conclusion in respect of the "easysearch",  He found a conceptual difference between the sign, used on a search engine website and in email footers, and easyGroup's marks.  He saw no visual or aural similarity beyond the presence of the word "easy" which was not dominant.

There was no identity or similarity between the specified services of easyJet or easyHotel and those applied by EFL under any of its signs.  Although EFL provided advertising, promotion and marketing services it did not provide licensing services or support to licensees.  It provided them only to its retail clients. None of the other activities that EFL did as part of its business amounted to licensing of goods or services, or providing support to licensees. The services provided by EFL were therefore neither identical with nor similar to those specified in easyGroup's registration.   As there was no identity or similarity of services provided by EFL and the specified services of easyGroup's registered marks, its infringement claim under s.10 (2) failed. 

easyGroup alleged that EFL's social media handle @easyuk infringed the first easyJet mark, the easyHotel and the easyGroup marks under s.10 (2).  The judge found a closer degree of similarity between that sign and the marks than between the easyfundraising sign and the marks. but no identity or similarity between the specified services and those for which the handle had been used.  It followed that that claim failed.

The judge reached similar conclusions with regard to EFL's signs that had been used between 2015 and 2022 and between 2022 to the present.

S.10 (3) Infringement

easyGroup complained that EFL's use of the easyfundraising sign and as of May 2007 its use of the easysearch sign, and its use of the plain word signs infringed the first easyJet mark, the easyHotel mark, the easyGroup mark, the easyMoney mark and the first easylife mark under s.10 (3) of the Trade Marks Act 1994.

The subsection provides:

"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which –

(a) is identical with or similar to the mark, .....
(b) .....

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark"

S.10 (3A) adds:

"Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.".

Mr Justice Fancourt referred to para [55] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd. for the probanda for a case under s.10 (3):

"(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, that is to say, (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."

He noted that the issues in dispute were (i) in part, (v) in part, (vii) and (viii).

His lordship referred to the following paragraphs of the Court of Justice's judgment in C-375/97 General Motors Corp. v Yplon SA  [2000] RPC 572, [1999] EUECJ C-375/97, [1999] ECR I-5421 for the law relating to reputation:

"[24] The public amongst which the earlier trademark must have acquired a reputation is that concerned by that trademark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.
[25] It cannot be inferred from either the letter or the spirit of Article 5.2 of the directive that the trademark must be known by a given percentage of the public so defined.
[26] The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trademark.
[27]. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."

The judge remarked that establishing reputation, for these purposes, had been held to be a "not particularly onerous requirement".  He added that it is concerned with recognition by that part of the relevant public using the type of goods or services for which the mark is registered and not the quality of the reputation.

As to the nature of the link between sign and trade mark, the judge referred to para [56] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd.:

"it is sufficient for the use of the sign to give rise to a link in the mind of the average consumer that the sign would call the registered trademark to mind even if the average consumer would not be likely to be confused as a result... this must, like the question whether there is a likelihood of confusion, be appreciated globally taking into account all factors relevant to the circumstances of the case."

He also cited para [62] of the General Court's judgment in T-541/22 Sanity Group GmbH v EUIPO [2023] EUECJ T-541/22, EU: T:2023:310, ECLI:EU:T:2023:310:

"The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the relevant public (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU: C:2017:602, paragraph 52 and the case-law cited). In particular, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8 (5) of Regulation 2017/1001, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU: T:2019:119, paragraph 182)."

Although a likelihood of confusion is not a requirement under s.10 (3), he recalled para [120] of Lord Justice Kitchin's judgment in Maier v ASOS plc [2015] EWCA Civ 220; [2015] ETMR 26 that the "calling to mind" of the average consumer was tantamount to the required link. 

Mr Justice Fanshaw referred to para [113] of Lord Justice Kitchin's judgment in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 4,; [2016] ETMR 22 for the meaning of the words "detriment to distinctive character."   Lord Justice Kitchin in turn referred to para [29] of the Court of Justice's judgement in Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd. [2008] ECR I-8823; [2009] RPC 15:

"As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that 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, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so."

Mr Justice Fanshaw added that whether such dilution has occurred or is at risk of occurring depends on a global assessment of the mark and the use or future use of the sign.   Referring to para [127] of Maier v ASOS plc, he said that it cannot simply be inferred from the mere presence of a similar sign in the market.

Turning to detriment to the repute of the trade mark, the learned judge referred to para [118] of Lord Justice Kitchin's judgment in  Comic Enterprises who referred to para [40] of the Court of Justice's judgment in Case C-487/07 L'Oréal SA v Bellure NV [2009] ECR I-5185; [2010] RPC:

"As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark."

The judge observed that in both categories of detriment, there must be at least a serious risk (if not actual evidence) of a change in the economic behaviour of the average consumer of the goods or services for which the mark is registered. The serious risk needs to be established by evidence or by deduction, based on a global appreciation of the impact, but it must be more than mere supposition.   In this case, easyGroup accepted that it could not prove an actual change in economic behaviour and relied on deduction.

His lordship observed at [275] that taking unfair advantage of the distinctive character or repute of a trade mark is sometimes referred to as "parasitism", "piggy-backing" or "riding on the coat tails,"  It is concerned with the advantage taken by the user of the sign, not with any detriment to the owner of the mark. The advantage may be taken deliberately or unintentionally.  

Advantage may nevertheless objectively be taken where the user of the sign benefits from the reputation of the mark, or from the marketing endeavours of its owner, without having to pay compensation or incur commensurate expense itself. Mere advantage is not sufficient to give rise to infringement. There must be something that makes the advantage unfair. Absent a case of deliberate riding on the coattails of a claimant's marks, there must be some other factor that creates unfairness, such as where a new entrant to a market gets an unfair lift from an association with well-known goods or services.

Following Sir Anthony Mann's judgment in EasyGroup Ltd v Easy Live (Services) Ltd [2022] EWHC 3327 (Ch); [2023] ETMR 12, Mr Justice Fancourt noted that a change in the economic behaviour of the average consumer must be established to succeed on the unfair advantage limb.  His lordship said at [278] that it is, perhaps, easier to see that such a change is required where a defendant already has a trading business and makes changes to its signs to take advantage. It is less obvious if a defendant is creating a new business, taking advantage of a claimant's trade marks, though some advantage will need to be proved.

easyGroup complained that the easyfundraising sign, the plain word sign from November 2005, the easysearch sign and the plain word form of that sign from May 2007 infringed the first easyJet mark, easyHotel, easyGroup and easyMoney marks under s.10 (3).  It had also alleged that its first easylife mark had been infringed but that mark had been revoked by his lordship under s.46.

The learned judge did not consider that easyGroup had proved that easyHotel had a reputation on either of those dates with a significant part of the general public even though the test is not a demanding one.  There may have been protectable goodwill but a reputation among a significant part of the hotel-using public requires more. By May 2007, there were still only 2 UK hotels, both in London. The launch of 2 hotels with a relatively small number of rooms was insufficient to establish a reputation for the mark.  Nor did easyGroup's tentative steps towards opening overseas hotels achieve a reputation before 2009. His lordship accepted that easyMoney probably had a reputation for loans and mortgages by May 2007 but not for ISAs, investment funds and deposit accounts until 2011. He did not accept that easyGroup had a reputation for the administration and management of licensing before 2009.

The judge considered the following issues when determining whether the general public using or considering using the easyfundraising platform or easysearch website would perceive a link between those signs and the abovementioned registered marks in para [286]:

"i) the low degree of similarity of the EF Sign, the easysearch Sign, the plain word forms of the Signs and the marks with a reputation (first easyJet mark and easyMoney mark);
ii) the extent of the reputation of the marks;
iii) the image or knowledge that the average consumer would have of those marks, whether aural or visual, and how distinctive the marks had become;
iv) the appreciation that the consumer would have of the Signs, whether visual or aural;
v) the particular purpose of the use or possible use of the easyfundraising platform or easysearch site by the consumer, namely to use it to raise funds for good causes while shopping with other retailers or doing internet searches;
vi) the absence of any similarity between the services provided by easyfundraising and easysearch and the easy+ brands, though bearing in mind that the consumer will be intending to buy goods and services on the platform; and
vii) the absence of any proved confusion or risk of confusion (and in this regard my findings about absence of confusion with easyJet will apply equally if not more so to easyMoney), bearing in mind that there can be a link made without a likelihood of confusion."

His lordship said that the existence of a family of brands would be relevant to his assessment but decided that members of easyGroup's family would be recognized and distinguished from other businesses that incorporated the word "easy" in their corporate names or straplines by their font and orange, black and white colours.  He considered whether easyJet was so famous, at the relevant times, that any business using the prefix "easy" as part of its name would bring to mind the more famous business, regardless of all other differences.  He concluded that the average consumer would not have seen a link between EFL's signs and the above marks.

Had there been a sufficient link the judge would have found that the association caused no damage to the distinctiveness or repute of the above marks and that no unfair advantage had been taken of them by EFL by using the easyfunndraising or the easysearch signs for the reasons set out between para [295] and para [317] of his judgment.

The judge found no link between the @easyuk social media handle and the registered marks. Had he found such a link he would have rejected the claims based on unfair advantage of or damage to repute or distinctiveness for the same reasons as above.

He reached the same conclusion in respect of the easyfundraising signs from 2015 to 2022 and from 2022 to the present for similar reasons though he accepted that there might be a link between the 2022 easyfundraising sign and the registered marks.  

Passing off

The parties had agreed that the outcome of the s.10 (2) claim would determine the claim for passing off.  However, the issue of whether EFL's signs had infringed the first Easylife mark was never tried because the judge revoked that mark under s.46.  The revocation of that mark did not dispose of the passing off claim.  ELS admitted that Easylife had goodwill in its name in relation to its mail-order catalogue and services provided through a general merchandise website.   

The judge considered that the average consumer would not be confused into thinking that EFL and Easylife were the same or associated businesses.  There was no evidence of actual confusion. The differences between the services that Easylife and EFL were offering were obvious.  Having found no attempt by the EFL to take advantage of easyGroup's marks, the judge made the same finding in relation to the goodwill of Easylife. None of EFL's signs suggest that the company had anything to do with Easylife. Moreover his lordship could find no damage to Easylife.

Palatine

As the judge had dismissed the trade mark infringement and passing off claims the question of whether Palatine was jointly or severally liable as an accessory did not arise.    However, his lordship made clear that even if he had found EFL liable for trade mark infringement or passing off, he would not have found  Palatine jointly or severally liable for that tort.

Because of the judgement of the Supreme Court in Lifestyle Equities CV and another v Ahmed and another [2024] UKSC 17, [2024] 2 WLR 1297, [2024] Bus LR 1438, [2024] ETMR 32, [2024] WLR(D) 233 Palatine could not be an accessory to EFL's infringement unless it knew the essential facts that made the acts of EFL wrongful and its conduct was a cause of that wrongdoing. No such knowledge had been pleaded.   Palatine was simply an investor in EFL's business. It first invested in August 2020. Any claim against it could therefore only relate to infringement by the 2022 easyfundraising sign and passing off.

Counterclaim for Invalidity of the Easy Networks and the Second Easylife Mark

This counterclaim had been contingent on a finding of confusion of EFL's signs and the Easy Networks mark or the second easylife mark.  As there had been no confusion it was unnecessary for the judge to consider this issue further.

The Claim for Invalidity or Revocation of the First EF Mark and the Second EF Mark

As there had been no infringement or passing off this claim failed.

Conclusion

The judge set out the combined effect of his findings at [372]:

"i) The first easylife mark and the easy.com mark are revoked for non-use with effect from a date to be agreed or determined, pursuant to s.46 of the 1994 Act;
ii) The counterclaim for partial revocation of the easyHotel mark is dismissed;
iii) The counterclaim for revocation of the second easyJet mark is granted in part, to the extent that a fair specification of the class 35 services is restricted to retail services for airline passengers, with effect from 4 February 2022;
iv) The claim against all Defendants for infringement of the nine trade marks under s.10(2) and s.10(3) of the 1994 Act is dismissed
v) The claim against all Defendants for passing off is dismissed;
vi) The claim against the Second Defendant for invalidity or revocation of the first EF Mark and the second EF Mark is dismissed;
vii) The counterclaim for invalidity of the Easy Networks mark and the second easylife mark will be dismissed."

This is a very clear, thorough, closely reasoned and well-documented judgment.  It reviewed comprehensively the authorities on all the issues that were before the judge. The case has however raised an issue over "variant forms" within the meaning of s.46 (2) of the Trade Marks Act 1994 which will have to be resolved by the Court of Appeal.    

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