Trade Marks - easyGroup Ltd v Easy Live (Services) Ltd
Chancery Division (Nicholas Caddick KC) easyGroup Ltd v Easy Live (Services) Ltd and others [2024] EWHC 2282 (Ch) (4 Sept 2024)
This was an action and counterclaim. The proceedings came on before Mr Nicholas Caddick KC sitting as a deputy judge of the High Court between 8 and 10 May 2024, He delivered judgment in easyGroup Ltd v Easy Live (Services) Ltd and others [2024] EWHC 2282 (Ch) on 4 Sept 2024 dismissing the claim and most of the counterclaim.
Claim
easyGroup Ltd ("easyGroup") was the registered proprietor of UK903367695 and UK3532904. The deputy judge referred to those marks as "the Easylife Marks". He called the first mark "the Easylife Stylised Mark" and the second mark" the Easylife Word Mark". An image of the Easylife Stylised Mark appears in the illustration at the very top of this article. easyGroup had acquired the Easylife Stylised Mark from Easylife Holdings Ltd and the Easylife Word Mark from Easylife Holdings Ltd's subsidiary company Easylife Ltd. on 21 July 2022 as part of an agreement to settle litigation between those companies and easyGroup.
Easy Live (Services) Ltd ("ESL") ELS supplies back-office software for auctioneers. It also provides an online platform at "easyliveauction.com" that allows auction houses to broadcast auctions to customers and allows customers to bid on lots in those auctions in real-time. In the course of that business, ELS used the blue and white signs that appear just below the image of the Easylife Stylised Mark. Mr Caddick called those signs the "Easy Emphasised Logo" and the "Auction Emphasised logo" respectively. ELS also used its corporate name EASY LIVE (SERVICES) LTD and the words "EASY LIVE" and "EASY LIVE AUCTION" as well as such variations as "easy live", "Easy Live", "EasyLiveAuction" and "EasyLiveAuction.com" in its business.
easyGroup alleged thst ELS's use of those signs had infringed its marks under s.10 (2) (b) of the Trade Marks Act 1994. It sued ELS for trade mark infringement and two of ELS's directors as joint tortfeasors.
ELS is also the registered proprietor of UK trade mark number UK3372957 for goods and services in classes 9, 38 and 42. easyGroup claimed a declaration that the registration was invalid under s.47 (2) on the grounds that:
(a) ELS's mark had been registered contrary to s.5 (2) (b) of the Act because there was a likelihood of confusion between ELS's mark and easyGroup's Easylife Stylised Mark; and
(b) ELS's mark had been registered contrary to s.5 (4) (a) because its use of that mark could have been prevented by an action for passing off.
This was the second set of proceedings between easyGroup Ltd and ESL. I discussed the trial and appeal in Trade Marks and Passing Off - easyGroup Ltd v Easy Live (Services) Ltd on 12 Jan 2024l
Defence
ELS denied infringement of the Easylife Stylised Mark on the following grounds:
- The mark should have been wholly or partially revoked under s.46 for lack of genuine use;
- The services in relation to which ELS used the accused signs were not identical or similar to those for which the Easylife Stylised Mark had been registered;
- There was no likelihood of confusion because the common element ('easy') was not distinctive but was descriptive, in relation to each of the services in issue; and
- Even if there had been a likelihood of confusion at the time when use of the ELS's signs commenced, there had been 12.5 years of honest concurrent use of those signs with the Easylife Stylised Mark before the first complaint.
ELS's defence to the allegation of infringement of the Easyslife Word Mark was that:
- While some of the services in relation to which ELS had used the accused signs were identical to some of those for which the Easylife Word Mark had been registered, there were others that were not even similar;
- There was no likelihood of confusion because the word "easy" was descriptive and not distinctive;
- The same honest concurrent user argument as before; and
- The registration of the Easylife Word Mark could have been prevented under s.5 (4) (a) by an action for passing off,
Dates by which the Trade Mark Claims are to be Assessed
In para [28] of his judgment, Mr Caddick found the relevant dates of assessment in the trade mark infringement claims to be as follows:
"a. In respect of the claim that the Easylife Stylised Mark has been infringed by the use of the signs "EASY LIVE AUCTION", "EASY LIVE" and "EASY LIVE (SERVICES) LTD"- January 2012;
b. In respect of the claim that the Easylife Stylised Mark has been infringed by the use of the Easy Emphasised Logo (for convenience, shown again below) - April 2016 (as that was the date when that logo was first used);
c. In respect of the claim that the Easylife Stylised Mark has been infringed by the use of the Auction Emphasised Logo (shown below) – May 2019 (as that was the date when that logo was first used);
d. In respect of the claim that the Easylife Word Mark has been infringed by the use of any of the Defendants' Signs or logos – 20 September 2020 (as that was the date when the Easylife Word Mark was registered);"
Average Consumer
In the case of the Easylife Marks, it was common ground that there are two relevant average consumers:
- the general public and,
- business organizations (or a person working within such an organisation)
- members of the general public who go online to view and bid in online auctions and,
- auction houses looking to advertise and conduct their auctions online.
It was again common ground that in the context of an infringement claim, the relevant average consumer is both (i) familiar with the registered trade mark and (ii) exposed to and is likely to rely on the defendant's sign. The deputy judge directed himself that the level of attention and care that the average consumer would display with regard to trade mark issues would depend on the nature of the goods or services involved and on how they are acquired. Each case would turn on its own facts but it is often the case that a professional acquiring services could be expected to pay more attention than a layperson.
On the facts of the present case, it seems to Mr Caddick that given the nature of the services directed at them, the business organizations (in the case of the Easylife Marks) and the auction houses (in the case of ELS's mark) were likely to be more attentive to trade mark issues than the general public. This would be relevant when comparing the advertising services which were directed at those consumers rather than at the general public.
Revocation of the Easylife Stylised Mark
The learned deputy judge considered the counterclaim for revocation of that mark first as it would have been a complete answer to the claim for infringement of that mark had it succeeded.
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).
(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1) (a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five-year period and before the application for revocation is made:
Provided that, any such commencement or resumption of use after the expiry of the five-year period but within the period of three months before the making of the application shall be disregarded unless preparation for the commencement or resumption began before the proprietor became aware that the application might be made.
(…)
(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."
"(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).
(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1) (a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five-year period and before the application for revocation is made:
Provided that, any such commencement or resumption of use after the expiry of the five-year period but within the period of three months before the making of the application shall be disregarded unless preparation for the commencement or resumption began before the proprietor became aware that the application might be made.
(…)
(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."
Mr Caddick summarized the issues before him in para [39]:
"The issues, therefore, are whether the five signs relied on by the Claimants are variant forms of the Easylife Stylised Mark within the meaning of s.46(2). If none of them is, then that mark falls to be revoked in its entirety. If, however, any of them is a variant form of the mark, the issue is the extent to which Easylife used it in relation to services for which the mark was registered and, therefore, whether or not there is a case for partial revocation of the mark."
"The issues, therefore, are whether the five signs relied on by the Claimants are variant forms of the Easylife Stylised Mark within the meaning of s.46(2). If none of them is, then that mark falls to be revoked in its entirety. If, however, any of them is a variant form of the mark, the issue is the extent to which Easylife used it in relation to services for which the mark was registered and, therefore, whether or not there is a case for partial revocation of the mark."
The learned deputy judge said in para [40] that the law on what constitutes a "variant form" of a registered mark had been considered by Mr Justice Arnold (as he then was) in Walton v Verweij Fashion [2018] EWHC 1608 (Ch) between paras [119] to [123] of his judgment in that case from which he discerned the following principles:
"a. The objective of s.46 (2) is 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 (see Walton at [119], citing Case C-252/12, Specsavers International Healthcare Ltd v Asda Stores Ltd at [29]).
b. There are two parts to the necessary inquiry. First, to identify the points of difference between the mark as used and the mark as registered and, second, to ask whether those differences alter the distinctive character of the mark as registered (see Walton at [120], citing BUD and BUDWEISER BUDBRAU Trade Marks [2002] EWCA Civ 1534).
c. The normal approach to the assessment and comparison of distinctive character applies in this context. Accordingly, it is necessary to analyse the 'visual, aural and conceptual' qualities of the mark as used and of the mark as registered and to make a 'global appreciation' of their likely impact on the average consumer (see Walton at [122]-[121], citing BUD and BUDWEISER BUDBRAU at [45] and Case C-501/15 European Union Intellectual Property Office v Cactus SA at [68]-[71])."
In support of its contention, easyGroup referred to paras [46] to [49] of Case T-24/17 LA Superquimica SA v EUIPO, [2018] EUECJ T-24/17, EU: T:2018:668, ECLI:EU: T:2018:668 and relied on BUD and BUDWEISER BUDBRAU Trade Marks, paras [91] and [92] of the judgment in Case T-792/22 Quatrotec Electronica SL v EUIPO ("Woxter") ECLI:EU: T:2024:69, [2024] EUECJ T-792/22, EU: T:2024:69 and Case T-521/21 6minutes Media Gmbh v EUIPO T521/21 ("Ad Pepper") [2019] EUECJ T-668/18, ECLI:EU: T:2019:719, EU: T:2019:719.
The deputy judge set out the registered mark and the alleged variants in the following table:
In accordance with para b of his summary of Mr Justice Arnold's principles in Walton, Mr Caddick identified the points of difference between the sign as used and the mark as registered. In his judgment, viewed through the eyes of the average consumer, these differences did not alter the distinctive character of the registered mark. Accordingly, he found at para [49] that Sign 1 was a variant form of the Easylife Stylised Mark within the meaning of s.46 (2). He repeated the exercise in relation to the other signs and came to the same conclusion between paras [52] and [56] and arrived at the same conclusion. Having found that the signs referred to above were variant forms of the Easylife Stylised Mark and after taking into account ELS's concession that there had been some use of some of these signs in respect of some of the registered services, he held at [57] that this was not a case where the mark should be revoked in its entirety.
Partial Revocation of the Easylife Stylised Mark
The next issue for the deputy judge to decide was whether the Easylife Stylised Mark should be partially revoked. To determine that issue he had to consider the nature and extent of the use of the variant signs including the extent to which such use was related to services for which the mark had been registered. He referred to s.46 (5) of the Trade Marks Act 1994 and the following paragraphs of Lord Justice Kitchin's judgment in Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834:
"[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."
He was also referred to paras [62] to [64] of Case T-242/22, Omniactive Health Technologies v Pharmaselect International Beteiligungs ECLI:EU: T:2023:858, [2023] EUECJ T-221/22, EU:T:2023:858:
"[62] … the concept of 'part of the goods or services' cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories …
…
[64]. As regards the question whether goods are part of a coherent subcategory which is capable of being viewed independently, it is apparent from the case law that, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. By contrast, the nature of the goods at issue and their characteristics are not, as such, relevant with regard to the definition of subcategories of goods or services …"
Finally, he considered para [44] of the judgment in Case C-714/18, ACTC GmbH v EUIPO [2020] ETMR 52, ECLI:EU: C:2020:573, [2020] EUECJ C-714/18P, EU:C:2020:573:
"[44] 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 …"
Mr Caddick considered the goods for which the Easylife Stylised Mark had been registered and the use that had been made of the variant signs in relation to those goods. He thought that it was arguable that there had been non-use of the mark for some of the specified services and invited further argument from the parties at the next hearing,
Infringement of the Easylife Stylised Mark
Having rejected the counterclaim for the complete revocation of the Easylife Stylised Mark the deputy judge considered the claim for infringement under s,10 (2) (b). He directed himself that to establish infringement under s.10 (2) it is necessary to fulfil the following conditions:
"(i) that there has been use of a sign by the Defendants within the relevant territory;
(ii) that such use was in the course of trade;
(iii) that such use was without the consent of the proprietor;
(iv) that such use was of a sign which is identical with or similar to the trade mark;
(v) that such use was in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and
(vi) that such use gave rise to a likelihood of confusion."
"(i) that there has been use of a sign by the Defendants within the relevant territory;
(ii) that such use was in the course of trade;
(iii) that such use was without the consent of the proprietor;
(iv) that such use was of a sign which is identical with or similar to the trade mark;
(v) that such use was in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and
(vi) that such use gave rise to a likelihood of confusion."
It was common ground that the first 3 conditions had been satisfied. The issues for the judge were to decide whether conditions (iv), (v) and (vi) had been fulfilled and if they had whether there had been honest concurrent user.
Mr Caddick considered the principles to be applied in relation to a claim under s.10 (2) which Lord Justice Arnold had summarized in Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA Civ 1207:
"(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;
(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."
"(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;
(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."
Mr Caddick found at best a moderate level of similarity between the Easylife Stylised Mark and ELS's signs. He then considered the degree of similarity between ELS's services and the services for which the mark had been registered. Before doing so he reminded himself of Mrs Justice Falk's guidance between paras [119] and [121] of her judgment in Montres Breguet S.A. v Samsung Electronics Co. Ltd [2022] EWHC 1127 (Ch) which he summarized as follows at para [90] of his judgment:
"a. Goods or services can be treated as identical where one is a subset of another; and
b. Similarity is assessed by reference to all relevant factors, including the nature of the goods, their end users, their method of use and whether they are in competition with each other or are complementary."
"a. Goods or services can be treated as identical where one is a subset of another; and
b. Similarity is assessed by reference to all relevant factors, including the nature of the goods, their end users, their method of use and whether they are in competition with each other or are complementary."
He also took account of para [56] of Lord Justice Arnold's judgment in Sky plc v Skykick UK Ltd [2020] EWHC 990 (Ch):
"(1) General terms are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services.
(2) In the case of services, the terms used should not be interpreted widely, but confined to the core of the possible meanings attributable to the terms.
(3) An unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers.
(4) A term which cannot be interpreted is to be disregarded."
He held at para [100] that ELS's catalogue service and auction broadcast service were identical or highly similar to the bringing together services for which the Easylife Stylised Mark had been registered.
Notwithstanding his findings that some of ELS's services were identical or very similar to the services for which the Easylife Stylised Mark had been registered and that there was a moderate degree of similarity between ELS#s signs and the registered mark, the deputy judge was satisfied that there was no real likelihood of confusion in para [104]. He set out his reasons in [105]:
Notwithstanding his findings that some of ELS's services were identical or very similar to the services for which the Easylife Stylised Mark had been registered and that there was a moderate degree of similarity between ELS#s signs and the registered mark, the deputy judge was satisfied that there was no real likelihood of confusion in para [104]. He set out his reasons in [105]:
"Whilst there is a moderate similarity between them, the average consumer of both types (a member of the general public or customers looking to advertise their goods) would have been well aware that that similarity arose from the use of a word ("easy") that was a normal word, a word that is widely used and which is capable of being used descriptively, but that was given some level of distinctiveness in the mark by being used in combination with the word "life", the words "lifestyle solutions" and the triangle/tick device. It seems to me that the average consumer would not assume that a party trading, even trading in relation to identical or similar services, using another sign that featured the word "easy" was the Claimant or associated in some way with the Claimant and/or its mark. The average consumer may well be aware of extensive use made of the word "easy" by the Claimant and its group of associated companies but I do not think that that person would assume that the Claimant had a monopoly of such use."
He added in the next paragraph:
"Here, the average consumer would see that, in the case of the Defendants' Signs, the word 'easy' had been combined with the word 'live' which, whilst sharing 3 of the 4 letters of the word 'life', has created something which, as set out above, is conceptually quite different to the Easylife Stylised Mark. The average consumer would also note the omission of the triangle/tick device and the other differences to which I have referred. All of this suggests that the average consumer is not likely to be confused, despite the identical or similar nature of the parties' respective services."
"Here, the average consumer would see that, in the case of the Defendants' Signs, the word 'easy' had been combined with the word 'live' which, whilst sharing 3 of the 4 letters of the word 'life', has created something which, as set out above, is conceptually quite different to the Easylife Stylised Mark. The average consumer would also note the omission of the triangle/tick device and the other differences to which I have referred. All of this suggests that the average consumer is not likely to be confused, despite the identical or similar nature of the parties' respective services."
easyGroup had alleged that there had been instances of actual confusion between the Easylife Stylised Mark and ELS's signs. Before considering that evidence Mr Caddick noted para [254] of Mr Justice Arnold's judgment in W3 Ltd v easyGroup Ltd [2018] EWHC 7 that a court should be cautious when interpreting written communications said to evidence confusion in cases where the authors of those communications are not called upon to give evidence. He was also mindful of Mr Justice Arnold's observation at [277] that the finding of a few instances of confusion did not preclude a finding that there was no likelihood of confusion. He referred to Ian Karet's judgment in TVIS Limited v Howserv Services Limited [2023] EWHC 2589 (Ch) that mere mistakes and the misnaming in cases where parties are using names of a descriptive nature (in that case "VETSURE" and "PETSURE") may not be evidence of relevant confusion. Lastly, he quoted para [77] of Lord Justice Arnold's judgment in Easygroup Ltd v Nuclei Ltd [2024] EWCA Civ 1247:
easyGroup's evidence of alleged actual confusion turned out to be 87 records none of which was supported by witnesses of which 76 were references to Easy Live as "Easy Life". According to the deputy judge, it was clear that the persons who misspelt ESL's corporate name intended to correspond with it. Many of the misspellings appeared to be typographical errors. There were also a few correspondents who referred to Easy Live when they meant Easy Life. They also appeared to be typos. There were 7 instances where confusion might have been suspected but these were not enough to cause Mr Caddick to change his mind about likelihood of confusion, ESL had searched 44.628 records and easyGroup 1.44 million and that was all that could be found.
"I considered the doctrine of "honest concurrent use" in Match v Muzmatch at [64]–[117]. I concluded that honest concurrent use of the sign complained of is not a defence to a claim for trade mark infringement under section 10(2)/Article 9(2)(b), but may be relied upon as a factor in the infringement analysis. If the claimant establishes a prima facie case of likelihood of confusion, the burden shifts to the defendant to establish that, by virtue of its honest concurrent use, there is nevertheless no adverse effect on any of the functions of the trade mark. In exceptional cases, honest concurrent use may lead to the conclusion that there has been no infringement, even though there is a small level of actual confusion between the trade mark and the sign, if most of the relevant class of consumers have come to understand that the trade mark and the sign denote different trade origins."
Having found that there was no likelihood of confusion, the honest concurrent user issue did not really arise. ESL accepted that it could only affect the infringement analysis. He added that had he found that there was a likelihood of confusion he doubted that this would have been one of those "exceptional cases" where the long period of trading side by side would assist ESL Given the absence of evidence of confusion, the only real relevance of that long period of co-existence was that it helped to show that there was no real likelihood of confusion and that the average consumer never saw the businesses as being connected.
In para [104] the learned deputy judge rejected the infringement case based on the Easylife Stylised Mark.
Infringement of the Easylife Word Mark
This was also a claim for infringement under s.10 (2) (b) of the Trade Marks Act 1994. As the Easylife Word Mark had no styling Mr Caddick said at para [131] that the similarity between ELS's signs and the trade mark was greater than the similarity between those signs and the Easylife Stylised Mark. He concluded that such similarity was moderate. He also held that ELS's services were identical or very similar to those for which the Easylife Word Mark had been registered.
As with the Easylife Stylised Mark, the deputy judge was satisfied that there was no likelihood of confusion arising in relation to the Easylife Word Mark. He remained of the view that both types of average consumer would continue to see the similarity as arising from the use of the word "easy" which was a normal and widely used word of a descriptive nature. In the absence of any styling, the average consumer would if anything be even less inclined to assume that another sign including the word "easy" was the easyGroup, Easylife or was associated in any way with easyGroup and/or Easylife and/or the Easylife Word Mark.
Having held that there was no likelihood of confusion between ELS's signs and the Easylife Word Mark it was unnecessary to consider whether there had been honest concurrent user.
Counterclaim for Invalidity of the Easylife Word Mark
In its skeleton argument, ELS indicated that its counterclaim for a declaration that the Easylife Word Mark had been run as a squeeze. If the court were to find no likelihood of confusion between ELS's signs and the Easylife Word Mark, the counterclaim would fall away. As Mr Caddick had found no likelihood of confusion Mr Caddick did not consider the issue any further.
The learned deputy judge added that had he been obliged to decide the issue he would have found in favour of easyGroup. That would have been because the Easylife companies could have brought a passing off action against ELS which would have prevented ELS from opposing the registration of of the Easylife Word Mark under s.5 (4) as it would have been unable to launch its own action for passing off.
easyGroup's Clain for Invalidity of ELS's Mark
easyGroup relied upon both s.47 (2) (a) and (b) of the Trade Marks Act 1994.
S.47 (2) provides:
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5 (1), (2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5 (4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the registration."
Starting with the claim under s.37 (2) (a), the "earlier trade mark" upon which easyGroup relied was the Easylife Stylised Mark. easyGroup contended that Easylife Holdings Ltd., its predecessor in title, could have opposed ESL's application for registration of UK3372957 on the grounds that that mark was similar to the Easylife Stylised Mark which had been registered with effect from 22 Sept 2003 in relation to identical services in circumstances giving rise to a likelihood of confusion. Mr Caddick said at [153] that the issues that arose in this claim were the same as those that arose in the Easylife Stylised Mark infringement claim. As he had rejected that infringement claim on the basis there was no likelihood of confusion, it followed that easyGroup's invalidity claim must also fail.
As for the claim under s.47 (2) (b) the deputy judge noted at [156] that easyGroup had recognized that a passing off claim would have failed for the same reason as an infringement claim. Accordingly, an opposition under s.5 (4) would also have failed.
Comment
This is a fascinating judgment for two reasons. First, it sheds light on what is meant by "variant form" for the purposes of s.46 (2) of the Trade Marks Act 1994. Secondly, the deputy judge found no likelihood of confusion even though there was some similarity between the Easylife Stylised Mark and ELS's signs and the services for which those signs were used were identical or very similar to the services for which the Easylife Stylised Mark had been registered. He said that was because the average consumer would have been aware that that similarity arose from the use of the word "easy" which he described as "a normal word, a word that is widely used and which is capable of being used descriptively." While the average consumer may be aware of extensive use made of the word "easy" by the easyGroup he or she not would assume that that company had a monopoly of such use. That may or may not be the case but there has been a lot of litigation over the use of that adjective as a corporate name or trade mark.
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