Trade Marks and Passing off - easyGroup Ltd v Easyfeetstore

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) easyGroup Ltd v Easyfeetstore OU and others [2026] EWHC 767 (IPEC) (1 April 2026)

His Honour Judge Hacon, who tried this claim, described it in para [1] of his judgment in easyGroup Ltd v Easyfeetstore OU and others [2026] EWHC 767 (IPEC) (1 April 2026) as "the latest in a line of claims brought by the claimant ('easyGroup') against parties trading under a name which begins with the word 'easy'."  he added that the claim was for trade mark infringement and passing off.

The Parties

The claimant is the owner and licensor of all intellectual property rights relating to the various 'easy' businesses set up by Sir Stelios Haji-Ioannou, the best known of which is easyJet. The first defendant ('Easyfeetstore') is an Estonian company which sells orthopaedic and orthotic insoles and related accessories online in several territories including the United Kingdom.  The second defendant, Mr Klishyn, is a 50% shareholder in Easyfeetstore and the sole director of the third defendant, Easyfeet Inc ("Easyfeet").  Easyfeet Inc is a Wyoming company which markets and sells orthopaedic and orthotic insoles, mainly in the United States.

The Claim
The defendants' insoles are advertised and sold under the trade name 'Easyfeet' and under the above sign. easyGroup is the registered proprietor of the following UK trade marks: 901232909, 2294415, 917808098, 3012320, 917986557, 903367695 and 3532904.  It alleged that such trading by Easyfeetstore and Easyfeet infringed its trade marks under s.10 (2) and s.10 (3) of the Trade Marks Act 1994 ('the 1994 Act') and constituted passing off.

S.10 (2)

The judge set out s.10 (2) at para [29] of his judgment:

"A person infringes a registered trade mark if he uses in the course of trade a sign where because -
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(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."

Enhanced Distinctive Character

He noted that easyGroup had argued that some of the trade marks in suit had an enhanced distinctive character. and that all but the two easylife marks (903367695 and 3532904) were part of a family of marks. Those two contentions were related.  Part of easyGroup's case on enhanced distinctive character was that the enhancement came from being part of the family.

Family of Marks

Judge Hacon referred to para [234] of Mr Justice Arnold's judgment in W3 Ltd v easyGroup Ltd  [2018] FSR 16, [2018] EWHC 7 (Ch):

"Where it is shown that the trade mark proprietor has used a "family" of trade marks with a common feature, and a third party uses a sign which shares that common feature, this can support the existence of a likelihood of confusion."

easyGroup contended that the members of its family were easyGroup, easyFood, easyFoodstore and easyTravelseat. The problem with that contention, as Judge Hacon pointed out at para [49], was that the only feature common to all of the marks was the word "easy" which was a conspicuously descriptive word.

easyGroup argued that the average consumer would take any mark consisting of "easy" attached to any other word that alludes to either goods or services of any kind to be a member of the family.  It had presented a similar argument to Mrs Justice Bacon in easyGroup Ltd v Beauty Perfectionists Ltd [2024] EWHC 1441 (Ch), but her ladyship was unpersuaded:

"I do not accept easyGroup's pleaded claim that its use of a family of marks has come to indicate to the average UK consumer, by any date relevant in these proceedings, that the use of a mark comprising "easy" before or as a prefix to a word or words alluding to goods and services was a reference to goods and services associated with, approved, authorised or endorsed by easyGroup alone, and no other entity. That is an extreme proposition which is not remotely established on the evidence before the court."

In Judge Hacon's view the same was true about the evidence in this case.  He suggested at para [53] that any recognition of a family might have depended on the sign being in orange, in Cooper Black font and with a first "e" in lower case, in which case the absence of all or any of those features in a sign might actively lead to a perception that the sign was not part of the family.  In the event, the evidence presented in these proceedings did not point one way or the other.  He concluded at [54]:

"easyGroup's contention that any mark consisting of 'Easy' or 'easy' with a suffix alluding to a type of goods or services, or a store in which they can be obtained, will be connected in the course of trade to the 'easy' family of undertakings was not made out."

Average Consumer

Judge Hacon recalled para [31] of Lord Justice Kitchin's judgment in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, which in turn referred to para [52] (b) of his judgment in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, 2012 [FSR] 19.  In the context that "[the] likelihood of confusion must be appreciated globally, taking account of all relevant factors", his lordship had said:

"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..."

The parties had argued that there were several average consumers on the basis that there would be an average consumer for each of the goods or services for which each of easyGroup's trade marks was registered but, in his honour's view, there was only one.  He referred to para [275] of Mr Justice Arnold's judgment in Sky plc v Skykick UK Ltd [2018] EWHC 155 (Ch):

"The average consumer for the purposes of an infringement claim must be a consumer of the relevant goods and/or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign. In the present case, because SKY is accepted to be a household name at least in relation to television broadcasting, telephony and broadband provision, it can be safely assumed that all the potentially relevant consumers are familiar with it. Accordingly, attention can be focussed upon those who are exposed to, and likely to rely upon, the sign SkyKick."

Judge Hacon observed at para [58] of his own judgment:

"This implies that the average consumer is a consumer who is in the market for the type of goods or services marketed under the accused sign, as opposed to those sold under the mark in suit. Of course the average consumer must be in a position to make an assessment of the likelihood of confusion, so he or she is assumed to be familiar with the trade mark."

His honour noted that Mr Justice Arnold had based his observation in Sky plc v Skykick UK Ltd. on para [34] of Lord Justice Floyd's judgment in London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729:

"As with all issues in trade mark law, the answer to disputed questions is normally provided by considering the purpose of a trade mark which, broadly speaking, is to operate as a guarantee of origin to those who purchase or use the product. In principle, therefore, and in the absence of any authority cited to us which is directly in point, I would consider that the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods."

Judge Hacon noted that the Supreme Court had approved the above passage in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25:

"The average consumer includes 'any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods': London Taxi Corpn Ltd v Frazer-Nash Research Ltd [2018] FSR 7, para 34, per Floyd LJ."

The learned judge concluded at para [67] of his judgment that "[the] average consumer is therefore a member of the public interested in orthotic insoles (or orthopaedic insoles if there is a difference) available freely online. He or she is not a medical professional."

Likelihood of Confusion

easyGroup argued that there would have been indirect confusion in that the average consumer would not mistake the sign for the trade mark but would believe that the goods offered for sale under the sign came from one of the 'easy' group of companies.

The judge's starting point was the Supreme Court's summary of the law on likelihood of confusion under s.10(2) of the 1994 Act in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc between paras [38] and [40]:

"[38] The manner in which the requirement of a likelihood of confusion in article 9 (2) (b) of Regulation 2017/1001 and article 10 (2) (b) of Directive 2015/2436 (see paras 13–14 above), and the corresponding provisions concerning relative grounds of objection to registration in Directive 2015/2436 and Regulation 2017/1001, should be interpreted and applied has been considered by the CJEU in a large number of decisions. In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version was set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] Bus LR 1097, para 27, as being:

'(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.'

[39] Having set out the standard summary of the principles in terms referable to the registration context, Arnold LJ went on to state, at para 28, that:

'The same principles are applicable when considering infringement although it is necessary for this purpose to consider the actual use of the sign complained of in the context in which the sign has been used.'

[40] The context in which the sign has been used was considered by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] FSR 19. Kitchin LJ, at para 87, stated:

'In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.'"

Judge Hacon added at [69]:

"To these must be added the evidence of actual confusion - or its absence. Clear evidence of confusion is likely to lend powerful support to a contention that there exists a likelihood of confusion, see Maier v ASOS plc [2015] EWCA Civ 220, at [80]. Where there is no evidence of actual confusion the position is more nuanced. In Maier it was said (at [80]) that where this is the case, despite side-by-side use of the trade mark and the sign, this may be powerful evidence against a likelihood of confusion. A more recent approach has been to note that there may be several factors which in any particular case make the emergence of actual confusion more or less likely. These must be taken into account in giving relevance and weight to the absence of evidence of actual confusion, i.e. this forms a multi-factorial assessment of its own within the global assessment of the likelihood of confusion, see Match Group, LLC v Muzmatch Limited [2023] EWCA Civ 454, at [45]-[53] and easyGroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247, at [91]-[96]."

Visual and Conceptual Similarities

easyGroup argued that in comparing the defendants' sign and the registered marks, the average consumer would focus on the 'easy' prefix.  Both 'feet' and 'feetstore' would be discounted as merely allusive to the type of goods on offer and the stores in which they can be found. All the more so, it was argued, because the average consumer would be familiar with the 'easy' family of marks.  The judge was unpersuaded.   He said at para [71]:

"I have found that easyGroup's argument regarding the perception of a family of marks was not made out. The average consumer (and the relevant public under the law of passing off) had no understanding one way or the other regarding a sign consisting of 'easy' plus a suffix of the type referred to. That leaves the word 'easy' as the only factor common to the seven trade marks and the signs. Every case must turn on its own evidence. The evidence in the present case did not displace what one might expect and what was held in easyGroup Ltd v Beauty Perfectionists Ltd [2024] EWHC 1441 (Ch), at [121]:

"'The 'easy' element of the [easyJet] mark, however, has no inherent distinctive character: it is a descriptive word, which indicates that the services are easy to use."

In the absence of any argument against Mrs Justice Bacon's finding in that case, Judge Hacon concluded at [72] that there was nothing by way of visual or conceptual similarity that lent support to a likelihood of confusion.

Similarity in Goods and Services

easyGroup relied on the similarity between the goods and services for which the easyTravelseat and Easylife marks had been registered and those for which the above Easyfeet sign had been used.  The judge accepted that the easyTravelseat was registered for goods identical to orthotic insoles.  He also had evidence that substantial numbers of insoles have been sold over the last 7-8 years, including sales on Amazon "for some time" under the Easylife mark.   

In his honour's view, the services for which the two Easylife Marks were registered were so broad that a potential connection with orthotic insoles was inevitable.  However, such a connection would have been too tenuous to have been of any significance. It could have been relevant had the goods been wholly or predominantly orthotic insoles. It could then have been argued that the use of the trade marks was such that the average consumer would associate the Easylife Marks primarily with orthotic insoles.  Instead, the marks had been used to market a very wide range of goods which included insoles. That evidence carried no real weight in assessing the likelihood of confusion.

Triangles

The claimant argued that both the accused sign and the Easylife marks incorporate triangles into their designs.  The judge was unimpressed.  He  said at [78]:

"To my mind, even if the average consumer noticed both triangles, they are of very different sizes and serve different purposes within the mark and the sign. Nothing would be made of it by way of a connection between the services supplied under the mark and the goods supplied under the sign."

No Actual Confusion

The judge said at [80] that although the absence of evidence of actual confusion was inconclusive, it was relevant and tended to show that there was no likelihood of confusion.

Conclusion on S.10 (2)

As there was 

• no relevant similarity between the registered trade marks and the defendants' signs;
• in the case of 6 out of the 7 trade marks, no similarities in goods or services; and
• no evidence of actual confusion;

Judge Hacon found insufficient evidence to give rise to a likelihood of confusion.  It followed that the case on infringement under s.10 (2) of the 1994 Act failed.

S.10 (3)

easyGroup alleged that the defendants' sign had infringed all its registered marks except easyTravelseat under s.10 (3) of the Trade Marks Act 1994. Judge Hacon set out s.10 (3) and (3A) at  para [85]:

"(3) 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 trade 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.

(3A) 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."

S.10 (3) Requirements 

Judge Hacon referred to para [13] of Lord Justice Arnold's judgment in Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262 which summarised the requirements for a successful action under s.10 (3) of the Trade Marks Act 1994:

"In order for such a claim to succeed, the following requirements must be satisfied: (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."

Satisfied Requirements

The defendants accepted that requirements (ii), (iii), (iv) and (vi) had been satisfied.

Requirement (v) - Similarity
In respect of (v), the judge found that the only similarity between any of the trade marks and the signs was the word 'easy ', which lacked any significant distinctive character.

Requirement (i) - Reputation

The judge distinguished distinctive character from reputation at para [90]:

"The distinctive character of a mark exists on a spectrum between the mark being highly distinctive and wholly descriptive. By contrast, the reputation of a trade mark under s.10 (3) is a knowledge threshold. It is a binary concept: either the mark has a reputation or it does not."

To determine whether the claimant's marks had a reputation, he considered the judgment of the Court of Justice of the European Union in Case C-375/97 General Motors Corporation v Yplon SA EU: C:1999:408, [1999] 3 CMLR 427:

"[22] ... It cannot be denied that, in the context of a uniform interpretation of Community law, a knowledge threshold requirement emerges from a comparison of all the language versions of the Directive.
[23] Such a requirement is also indicated by the general scheme and purpose of the Directive. In so far as art. 5 (2) of the Directive, unlike art. 5 (1), protects trademarks registered for non-similar products or services, its first condition implies a certain degree of knowledge of the earlier trade mark among the public. It is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trademark, may possibly make an association between the two trademarks, even when used for non-similar products or services, and that the earlier trade mark may consequently be damaged.
[24] The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, 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 art. 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 trade mark.
[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 trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."

In considering the nature of the "knowledge threshold", Judge Hacon also considered para [17] pf the CJEU's judgment in C-125/14 Iron & Smith kft v Unilever NV U:C:2015:539:

"In that connection, as regards art.9 (1) (c) of Regulation 40/94, the Court held that the concept of 'reputation' assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark (see judgment in PAGO International (C-301/07) EU: C:2009:611 at [21] and [24])."

He also quoted Mr Justice Fancourt's judgment in Sazerac Brands LLC v Liverpool Gin Distillery Ltd [2020] EWHC 2424 (Ch):

"[34] The relevant public which must have some knowledge of the earlier trade mark is therefore that concerned by it. That must mean the part of the public that has had contact with or exposure to the goods or services on which the owner of the mark has used it. The extent of the public that must have some knowledge of the trade mark therefore depends on the product or service marketed by its owner. But not all of that sub-set of the public needs to have knowledge: it suffices that a significant part of the public concerned has knowledge.
[35] The parties did not agree whether, as concerns Eagle Rare's reputation, the relevant part of the UK public was: (1) that with contact with or exposure to the whisky market generally; or (2) that with contact with or exposure more specifically to the bourbon market; nor is this a point that has been expressly decided in any domestic or European authority that the parties' lawyers could find. The claimants submitted the latter, on the basis that they had only marketed bourbon and so could only have established a reputation for a brand of bourbon. The defendants submitted the whisky market generally, on the basis that the first claimant's UK trade mark is registered for the broader specification of "whisky", not 'bourbon', as the EU trade mark is. They argued that an attempt to gain wider protection of the mark in the whisky market as a whole meant that a reputation had to be established across that wider market, if reputation was to be invoked, otherwise a claimant could obtain much wider extended protection for a mark on the basis of a broad specification but narrow use.
[36] In my judgment the claimants are right on this issue, both in principle—where the alleged infringing use is in the narrower class of goods—and as a matter of interpretation of the ruling of the CJEU. Paragraph 24 of the judgment in General Motors v Yplon makes it clear that the extent of the reputation that needs to be established depends on the use of the trade mark on products or services actually marketed, and that it is only the part of the public concerned by the actual use of the mark that must have the relevant knowledge of it. The words of [26] ("the products or services covered by that trade mark"), though capable of being read as a reference to the specification of the trade mark, are not in context making that reference: [26] explains that only a significant part of the public concerned, as identified in [24], and not the whole of it, needs to have knowledge of the trade mark. It would be illogical for the owner of the mark to have to prove a reputation in a field in which the mark has not yet been fully deployed, or deployed at all, if all that they were seeking to do was restrain infringement in a narrower field in which the mark had been used. Were the owner of a mark seeking to restrain infringement under art.9 (2) (c) that went beyond the scope of the use of the mark then a different conclusion might well be reached, on the basis that reputation on a wider basis needed to be proved to restrain a wider infringement."

 

Finally, the judge mentioned para [46] of Lord Justice Arnold's judgment in TVIS Ltd v Howserv Services Ltd [2024] EWCA Civ 1103:

"Although the threshold for reputation for the purposes of extended protection is not particularly high, it is far from a trivial one."

There was no dispute that easyJet had a reputation but the defendants challenged easyFood and eastFoodstore.  After hearing evidence of the nature and extent of easyFood's business, the learned judge found that the mark had a reputation.

Requirement vii  - Link

On the need for a link, Judge Hacon referred to para [41] of Lord Justice Arnold's judgment in Thatchers Cider Co Ltd v Aldi Stores Ltd [2025] EWCA Civ 5:

"Whether the use of the sign gives rise to a link between the sign and the trade mark in the mind of the average consumer must be appreciated globally having regard to all the circumstances of the case: see Adidas-Salomon v Fitnessworld at [29]-[30], Adidas v Marca Mode at [42] and Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd [EU:C:2013:497], [2014] F.S.R. 4 ('Specsavers (CJEU)') at [120]. The fact that the sign would call the trade mark to mind for the average consumer, who is reasonably well informed and reasonably observant and circumspect, is tantamount to the existence of such a link: see Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823  at [60] and Specsavers (CJEU) at [121]."

His honour found no link between any of the registered marks and the defendants' signs.  It followed that the claim under s.10 (3) failed on that ground alone.   For the sake of completeness, he considered the other requirements for liability under that section which Lord Justice Arbikd mentioned in para [13] of his judgment in Lidl.

Requirement viii (a) - Detriment to the Distinctive Character or Repute of the Trade Mark

The judge's starting point was para [40] of the CJEU's judgment in C-487/07 L'Oréal SA v Bellure NV [2009] EUECJ C-487/07, [2010] RPC 1, [2009] EUECJ C-487/7, [2009] ECR I-5185, [2010] Bus LR 303, [2009] ETMR 55:

"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."

He also referred to paras [76] and [77] of the CJEU's judgment in C-252/07 Intel Corp Inc v CPM United Kingdom Ltd:

"[76] ... detriment to the distinctive character of the earlier mark 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.
[77] It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future."

The CJEU referred to those paragraphs in para [34] of C-383/12 P Environmental Manufacturing LLP v OHIM  EU: C:2013:741:

"[34] According to the Court's case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corp , paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment),
...

[36] The wording of the above case-law is explicit. It follows that, without adducing evidence that the condition is met, the detriment or the risk of detriment to the distinctive character of the earlier mark ...cannot be established.
[37] The concept of "change in the economic behaviour of the average consumer" lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers' perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself to establish the existence of a detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8 (5) of Regulation No 207/2009, in as much as that similarity does not cause any confusion in their minds.

...

[42] Admittedly, Regulation 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admits the serious risk of such detriment, allowing the use of logical deductions.
[43] None the less, such deductions must not be the result of mere suppositions but ... must be founded on "an analysis of the probabilities and by taking into account of the normal practice in the relevant commercial sector as well as all other circumstances of the case."

His honour next considered the evidence that would be required to support an allegation of detriment and referred to para [118] of the Court of Appeal's judgment in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation:

"[118] Here the Court of Justice has explained that a serious risk of detriment may be established by deduction, but any such deduction cannot be supposition and must instead be founded properly on all the circumstances of the case and the nature of the trade in issue."

He concluded at [109]:

"Thus, if a party alleges that there has already been detriment to the distinctive character or repute of a trade mark, the party must provide evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent upon use of the later mark, or the accused sign, as the case may be. If the allegation is that there is a serious risk of such detriment, while self-evidently there will be no evidence of detriment having occurred, evidence must be provided based on an analysis of the probabilities, the normal practice in the sector and all other relevant circumstances."

easyGroup had alleged that the use of the [Easyfeet and Easyfeetstore] would limit the ability of the claimant to license the easy brand and that such use would therefore cause detriment to the reputation of the brand. The judge rejected that contention. The claimant did not allege detriment to distinctive character or the repute of any of the trade marks in suit. There was no pleading of a change in the economic behaviour of the average consumer and no evidence was advanced of such a change, whether direct or inferred.

Requirement (viii) (b) - Unfair advantage

Judge Hacon turned again to the CJEU's judgment in L'Oréal for a definition of unfair advantage:

"[41] As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It 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.
..............
[49] ... 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, without paying any financial compensation and without being required to make efforts of his own in that regard, 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."

He concluded that an allegation that a defendant has taken unfair advantage of the distinctive character or the repute of a trade mark must also be supported by evidence of a change in economic behaviour on the part of the customers of the defendant's goods or services marketed using the accused sign and referred to para [197] of Sir Anthony Mann's judgment in easyGroup Ltd v Easy Live (Services) Ltd [2022] EWHC 3327 (Ch).

easyGroup argued that the perception of a link between the 'easy' family of trade marks and the signs Easyfeet and Easyfeetstore had led to greater attention being paid to their signs and goods.  That was an advantage for which the defendant had not paid and which was therefore unfair.  The judge dismissed that argument.   Even if there had been a link in the mind of the average consumer between the accused signs and the 'easy' family of mark, there was no evidence of change in the economic behaviour of the defendants' customers as a result of that link.  It followed that no unfair advantage had been established.

Requirement (ix) - Without Due Cause

Save for the defendants' denial that the use of their signs was without due cause, there was very little discussion about this requirement.  In view of the findings he had already made, the judge saw no need to discuss this point further.

S.11A Defence

The defendants relied on s.11A (1) of the Trade Marks Act 1994 in relation to the easyGroup series mark in respect of the dissemination of advertising, the easyFoodstore mark and the easylife device mark.  The section provides:

"11A.(1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46 (1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought.
(2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought.
(3) If the defendant so requests, the proprietor of the trade mark must furnish proof –
(a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or
(b) that there are proper reasons for non-use.
(4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from "Provided that" to the end of subsection (3))."

S.46 (1) (a) and (b) of the Act provides as follows:

"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; ..."

These provisions are subject to s.46 (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."

Judge Hacon explained at para [124] of his judgment that the criterion applied under s.46 (1) (a) is a lack of genuine use without proper reason within the relevant five-year period.

Lord Justice Arnold considered what was meant by "genuine use" for the purposes of s.46 (1) (a) in para [106] of his judgment in easyGroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247:

'[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 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 ...
(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 ... 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...'

easyGroup did not pursue its allegation of infringement of its easyGroup series mark through the dissemination of advertising.   Consequently, the defendants no longer needed to rely on s.11A (1) in respect of that allegation.  As for the easyFoodstore and easylife device marks, the parties agreed that the issue turned on whether those marks had been put to genuine use within the five years immediately before the issue of the claim form, that is to say, between 27 June 2018 and 26 June 2023.   If not, the claimant could not object to the defendants' use of the signs and the defendants would not need to rely on s.11A (1),

The judge was not satisfied that the issue was sufficiently explored at trial.   Since the defendants did not need to rely on s.11A, his honour did not discuss it further,

Passing off

easyGroup did not press its claim for passing off separately from its claim under s.10 (2) of the Trade Marks Act 1994.

Joint Liability
Mr Klishyn admitted personal joint liability for the acts of infringement of trade marks and passing off committed by Easyfeetstore if there were any. easyGroup pleaded that he was also jointly liable for the acts of Easyfeet.  He did not deny that allegation in his defence.  Had Easyfeet been liable for trade mark infringement and passing off, the judge would have found that Mr Klishyn was jointly liable.

Easyfeetstore's EASYFEET Trade Mark

Easyfeetstore had registered EASYFEET as a UK trade mark for orthopaedic insoles under trade mark number 3621537 with effect from 6 April 2021.   easyGroup applied for it to be declared invalid under s.5 (2), (3) and (4) on the grounds that the marks upon which it relied for its infringement action were "earlier trade marks" within the meaning of s.6 (1) and its claim for passing off was an "earlier right" for the purposes of s.5 (4).  The judge dismissed the application because the parties agreed that it stood or fell with the claims under s.10 (2) and (3) and the action for passing off.

Comment

This is an exceptionally useful authority in that it reviews the case law for claims under s.10 (2) and (3), families of marks, average consumers, likelihood of confusion, reputation, the s.11A  defence and several other issues of trade mark law in close detail.  It almost serves as a textbook and will be referred to by practitioners and academics for many years to come.  Anyone wishing to discuss this case may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.