Trade Marks and Passing Off - easyGroup Limited v Easylife Limited
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| By EasyGroup, Public Domain, https://commons.wikimedia.org/w/index.php?curid=100183294 |
Chancery Division (Chief Insolvency and Companies Judge Briggs) easyGroup Ltd v Easylife Ltd and another (Rev2) [2021] EWHC 2150 (Ch) (29 July 2021)
I mentioned this action in Practice - easyGroup Ltd v Easylife Ltd on 2 Feb 2022 when I discussed its pre-trial review (easyGroup Ltd v Easylife Ltd and another [2021] EWHC 1705 (Ch) (11 June 2021). Readers will recall that it was an action for trade mark infringement and passing off. There was also a counterclaim for revocation and declarations of invalidity. The action and counterclaim came on for trial before Chief Insolvency and Companies Judge Briggs on 7, 8, 9 and 13 July 2021. Judge Briggs delivered judgment on 29 July 2021 (easyGroup Ltd v Easylife Ltd and another (Rev2) [2021] EWHC 2150 (Ch) (29 July 2021). By para [295] of his judgment, he dismissed the claim, revoked the registrations of easyLand and easy4men and deleted “tourist office services” from the services for which easyJet had been registered.
The Claimant's Marks
The marks upon which the claimant relied were as follows:
| No | Mark | Goods and/or services relied on | Filing date | Date registered |
| UK2016785 | EASYJET | 39: Transportation of passengers and travellers by air; arranging of transportation of passengers and travellers by land; airline services; arranging, operating and providing facilities for vacations; travel agency and tourist office services; | 5/4/95 | 4/10/96 |
| UK2294415 |
| 3: preparations and substances for use in the care and appearance of the hair, face, skin; non-medicated toilet preparations; cleaning preparations; shampoos 35: business organisation, business administration and business management services; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and to purchase those goods through a retail general merchandise shop | 4/3/02 | 17/10/03 |
| UK2273362 | easyLand | 35: the bringing together for the benefit of others of a variety of goods, enabling customers conveniently to view and to purchase such goods through general merchandise retail shops | 22/6/01 | 17/5/02 |
UK903763489 |
| 3: shower gels, shaving lotion, shaving balm; hair care products including shampoo (all in class 3). | 13/4/04 | 3/11/05 |
The Counterclaim
The Law
The judge referred to ss.1, 2, 9, 10 and 46 of the Trade Marks Act 1994 between paras [102] and [105] of his judgment. He directed himself as to the relevant principles between [196] and [197]. At para [198] he noted that "many issues in trade mark law fall to be assessed from the perspective of the “average consumer” of the relevant goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect." He continued at [200]:
"In my judgment, the average consumer is the consumer of the goods and services in relation to which the signs complained of have been used."
Referring to Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703, he observed that it was common ground that the question of whether the use of a sign infringes a trade mark falls to be assessed as at the date that the use of the sign was commenced and that those dates had been agreed by the parties.
"In my judgment, the average consumer is the consumer of the goods and services in relation to which the signs complained of have been used."
Referring to Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703, he observed that it was common ground that the question of whether the use of a sign infringes a trade mark falls to be assessed as at the date that the use of the sign was commenced and that those dates had been agreed by the parties.
Revocation
Judge Briggs considered the counterclaim for revocation before the claims for infringement and passing off. He quoted paras [194] and ]195] of Mr Justice Arnold's judgment in W3 Ltd v Easygroup Ltd and another [2018] EWHC 7 (Ch), [2018] FSR 16:
“(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, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: ….
(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. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: ….
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: …”
Proposition (3) has subsequently been reinforced by the ruling of the CJEU in Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434], [2017] Bus LR 1795 that:
'Article 15 (1) of …. Regulation … 207/2009 … must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. …'”
“(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, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: ….
(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. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: ….
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: …”
Proposition (3) has subsequently been reinforced by the ruling of the CJEU in Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU:C:2017:434], [2017] Bus LR 1795 that:
'Article 15 (1) of …. Regulation … 207/2009 … must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. …'”
He reminded himself that Case C-141/13 P Reber Holding & Co KG v OHIM [2014] EUECJ C-141/13, ECLI:EU:C:2014:2089, EU:C:2014:2089 illustrates that evidence of retail sales under or by reference to a trade mark may be insufficient to prove genuine use of the mark. With those principles in mind, the judge considered whether easyGroup had discharged the evidential burden in respect of the various trade marks.
He found st [217] that easyJet had failed to discharge the burden in respect of easyLand. There had been no attempt to provide evidence of a commercial enterprise, no attempt to provide turnover or overhead costs and there was no evidence that tax was ever paid. Its only receipts were deposits in an honesty box. He concluded at [218]:
"Having regard to all the relevant facts and circumstances there is no evidence of real commercial exploitation of the mark. There is no evidence to support the view that it can be warranted in the retail sector to maintain a share in the market for the services in question. Although goods may be purchased at the easyHotel, the sale of those goods are not dependent upon the retention of the easyLand mark. The evidence of scale and frequency of use of the mark is limited to a sign in the Croydon easyHotel and a website. There is no evidence of a connection between the mark and marketing of the goods in question. If anything, the easyLand mark is superfluous and provides no valuable purpose. There is no or insufficient evidence to discharge the onus on easyGroup that easyLand is used in the sense required."
"Having regard to all the relevant facts and circumstances there is no evidence of real commercial exploitation of the mark. There is no evidence to support the view that it can be warranted in the retail sector to maintain a share in the market for the services in question. Although goods may be purchased at the easyHotel, the sale of those goods are not dependent upon the retention of the easyLand mark. The evidence of scale and frequency of use of the mark is limited to a sign in the Croydon easyHotel and a website. There is no evidence of a connection between the mark and marketing of the goods in question. If anything, the easyLand mark is superfluous and provides no valuable purpose. There is no or insufficient evidence to discharge the onus on easyGroup that easyLand is used in the sense required."
He therefore directed the registration of easyLand to be revoked.
In its closing submissions, easyGroup conceded that easy4men trade had not been put to genuine use. Accordingly, Judge Briggs revoked that mark in respect of “preparations and substances for use in the care and appearance of the hair, face, skin; non-medicated toilet preparations; cleaning preparations; shampoos”.The learned judge accepted that the easyJet mark had been used in respect of most of the goods and services for which it had been registered. The one exception had been the "provision of services for tourists." He said he would direct that "part of the trade mark description be clarified", that he would hear counsel as to how that might be done and that the words “and the provision of services to tourists” would be a reasonable starting point.
Infringement under s.10 (2)
Judge Briggs noted at para [235] of his judgment that the claim had been cut down significantly as a result of the revocations. The surviving marks were easyJet in respect of “transportation of passengers and travellers by air; arranging of transportation of passengers and travellers by land; airline services; arranging, operating and providing facilities for vacations; travel agency and tourist office services” and easyGroup in respect of “the commercial administration and management of 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”. easyGroup alleged that
"the easylife group sign, the Domain, the EC Sign, the EG Sign and the Easycare Sign are similar to the easyJet and easyGroup sign and have been used in relation to services that are similar with the goods and/or services for which the easyJet and easyGroup marks are registered such that, by reason of such similarities, there exists a likelihood of confusion on the part of the public."
The judge referred to paras [229] to [236] of Mr Justice Arnold's judgment in W3 for the applicable legal principles:
“In order to establish infringement under Article 9 (1) (b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public. In the present case, there is no issue as to conditions (i)-(iv).
Comparison of services. In considering whether services are similar to each other, all relevant factors relating to the services must be considered, including their nature, their end users, their method of use and whether they are in competition with each other or are complementary: see Case C-106/03 Canon KKK v Metro Goldwyn Mayer Inc [1998] ECR I-5507 at [23].
Likelihood of confusion. The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the CJEU in a large number of decisions. The Trade Marks Registry has adopted a standard summary of the principles established by these authorities for use in the registration context. The current version of this summary, which takes into account the decision of the Court of Appeal in Maier v ASOS plc [2015] EWCA Civ 220, [2015] FSR 20, is as follows:
'(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.'
The same principles are applicable when considering infringement, although as noted above it is necessary for that purpose to consider the actual use of the sign complained of in the context in which it has been used.
Common elements with low distinctiveness. If the only similarity between the trade mark and the sign complained of is a common element that is descriptive or otherwise of low distinctiveness, that points against there being a likelihood of confusion: see Whyte and Mackay Ltd v Origin Wine UK Ltd [2015] EWHC 1271 (Ch), [2015] FSR 33 at [43]-[44].
Family of marks. 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. As the Court of First Instance (as it then was) explained in Case T-287/06 Miguel Torres v Office for Harmonisation in the Internal Market [2008] ECR II-3817:
'79. As regards the applicant's argument that its earlier marks constitute a 'family of marks' or a 'series of marks', which can increase the likelihood of confusion with the mark applied for, such a possibility was recognised in BAINBRIDGE and confirmed in Case C-234/06 P Il Ponte Finanziaria [2007] ECR I-7333.
80. According to that case-law, there can be said to be a 'series or a 'family' of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark (BAINBRIDGE, paragraph 123). In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion (BAINBRIDGE, paragraph 124). When there is a 'family' or a 'series' of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks (Il Ponte Finanziaria, paragraph 63).
81. However, according to the above case-law, the likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if both of two conditions are satisfied. First, the earlier marks forming part of the 'family' or 'series' must be present on the market. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That might not be the case, for example, where the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (BAINBRIDGE, paragraphs 125 to 127).'
I do not understand it to be in dispute that it is not necessary for this purpose for all of the trade marks in the family to have been registered at the relevant date, provided that at least one was registered and a number were in use.
Colour. Where the trade mark proprietor has used the trade mark in a particular colour or combination of colours, and a third party uses a sign in the same colour or combination of colours, this can support the existence of a likelihood of confusion even if the trade mark is not registered in colour. The CJEU ruled in Specsavers (CJEU) that:
‘Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.’”
“In order to establish infringement under Article 9 (1) (b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public. In the present case, there is no issue as to conditions (i)-(iv).
Comparison of services. In considering whether services are similar to each other, all relevant factors relating to the services must be considered, including their nature, their end users, their method of use and whether they are in competition with each other or are complementary: see Case C-106/03 Canon KKK v Metro Goldwyn Mayer Inc [1998] ECR I-5507 at [23].
Likelihood of confusion. The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the CJEU in a large number of decisions. The Trade Marks Registry has adopted a standard summary of the principles established by these authorities for use in the registration context. The current version of this summary, which takes into account the decision of the Court of Appeal in Maier v ASOS plc [2015] EWCA Civ 220, [2015] FSR 20, is as follows:
'(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.'
The same principles are applicable when considering infringement, although as noted above it is necessary for that purpose to consider the actual use of the sign complained of in the context in which it has been used.
Common elements with low distinctiveness. If the only similarity between the trade mark and the sign complained of is a common element that is descriptive or otherwise of low distinctiveness, that points against there being a likelihood of confusion: see Whyte and Mackay Ltd v Origin Wine UK Ltd [2015] EWHC 1271 (Ch), [2015] FSR 33 at [43]-[44].
Family of marks. 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. As the Court of First Instance (as it then was) explained in Case T-287/06 Miguel Torres v Office for Harmonisation in the Internal Market [2008] ECR II-3817:
'79. As regards the applicant's argument that its earlier marks constitute a 'family of marks' or a 'series of marks', which can increase the likelihood of confusion with the mark applied for, such a possibility was recognised in BAINBRIDGE and confirmed in Case C-234/06 P Il Ponte Finanziaria [2007] ECR I-7333.
80. According to that case-law, there can be said to be a 'series or a 'family' of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark (BAINBRIDGE, paragraph 123). In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion (BAINBRIDGE, paragraph 124). When there is a 'family' or a 'series' of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks (Il Ponte Finanziaria, paragraph 63).
81. However, according to the above case-law, the likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if both of two conditions are satisfied. First, the earlier marks forming part of the 'family' or 'series' must be present on the market. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That might not be the case, for example, where the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (BAINBRIDGE, paragraphs 125 to 127).'
I do not understand it to be in dispute that it is not necessary for this purpose for all of the trade marks in the family to have been registered at the relevant date, provided that at least one was registered and a number were in use.
Colour. Where the trade mark proprietor has used the trade mark in a particular colour or combination of colours, and a third party uses a sign in the same colour or combination of colours, this can support the existence of a likelihood of confusion even if the trade mark is not registered in colour. The CJEU ruled in Specsavers (CJEU) that:
‘Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.’”
Judge Briggs held that the above principles were substantially the same as those that Mr Justice Arnold had propounded in Sky Plc and others v Skykick UK Ltd and another [2018] RPC 5, [2018] ETMR 23, [2018] EWHC 155 (Ch) to which he had been urged to show greater regard.
The judge compared the goods and services for which easyJet had been registered with those that had been supplied under the Easylife mark in the following table at para [244]:
In his judgment, they were neither identical nor similar.| Services in specification | Ds’ goods and services |
| Class 39: Transportation of passengers and travellers by air arranging of transportation of passengers and travellers by land airline services arranging, operating and providing facilities for vacations travel agency and tourist office services | Retail sale of a variety of clothing, homewares, household goods, gadgets, motoring accessories, health and mobility items for the elderly and/or infirm, and other miscellaneous goods |
| Domestic cleaning products | |
| animal repellents | |
| lawn colouring dye product |
With regard to the comparison of signs, the judge had been asked not to follow Mr Justice Arnold's finding in W3 that the use of the word “easy” was not the distinctive and dominant component of the trade mark in question because (a) it was a finding of fact between different parties and (b) the trade mark in question was an EU mark. Judge Briggs agreed that the Court should make its own assessment and that the exercise of the court did not involve simply following suit but held that the court could have regard to Mr Justice Arnold's reasoning, analysis and approach. In this case Easylife conceded that easyJet and easyGroup were distinctive marks but it denied that "easy" was distinctive. It also conceded that evidence had been adduced to support a family of marks but argued that (i) the pleaded case failed to provide evidence that the family of marks existed in 1996; (ii) easy4men was not used until 2004; (iii) easyGroup was not used until 2016 and (iv) the late inclusion of other easyGroup companies and trade marks should not be relied upon.
Easylife also made the following additional points which the judge held to be well founded:
| easyEverything | This mark was used on a substantial scale in relation to a chain of internet cafes from 1999 to October 2001, at which point the name changed to easyInternetcafe. There is no evidence of use since then in relation to any goods or services. |
| easyInternetcafe | The use started declining when the flagship store on Oxford Street was sold in June 2004. There was no remaining business to speak of by 2009. Ultimately it was a commercial disaster - the company was liquidated in 2016, having lost its shareholders £92m. |
| easyValue | An online price comparison site was operated under this name from 2001 to around 2004. Again, it was not a success. Its annual turnover figures were in the low £10s of thousands and it lost over £1m for 3 years in a row. |
| easyMoney | A credit card business was set up under this name in 2001 but was short-lived. The trading company (Easymoney (UK) Ltd) appears to have stopped trading in 2003. |
| easyCruise | This operated cruises from around 2005 until a date that is unclear, but at some point before 2013. |
| easyKiosk | This was used in relation to catering and retail services provided on easyJet flights from around the launch of the airline in 1995. It is the name of the food and drink trolley service and is also used in an onboard catalogue containing details of goods available for purchase onboard. It appears from easyGroup’s disclosure that the use of the name onboard was phased out in around 2007. This mark has not been used outside the airline. |
| easyRider | This was the name of the easyJet inflight magazine from around 1997. It appears that easyJet had stopped using this name by January 2002, when the relatively newly floated easyJet Plc rebranded the inflight magazine as easyJet. |
| easyRamp | easyGroup alleges that ground handling services were provided in connection with easyJet flights under this name from 1998/1999. There is no evidence of consumer-facing use of this name. |
| easyTech | This appears to have been used by a company called FLS Aeropsace in relation to the maintenance of easyJet’s aircraft from 1998/1999. The only customer was easyJet and again, this was not a consumer-facing business. |
| easyHotel | The first easyHotel was opened in Kensington, London on 1 August 2005. A number of other hotels followed in the UK and it subsequently developed into a substantial business. easyGroup has claimed that this mark had a reputation from 2006. |
| easyRentacar | This was a car rental business that was launched in April 2000, initially from premises in London Bridge. It was a substantial concern. The name changed to easyCar in around 2003. As with easyEverything / easyInternetcafé, this business was never profitable, lost huge sums of money for the shareholders in the relevant period and was discontinued in the mid-late 2000s. |
| easyCar | Ms Luxton’s evidence is that easyCar is now a third party agent / booking platform. |
The judge was prepared to accept that for the purposes of s.10 (2) and (3) that there was a family of marks but the table demonstrated that it was not as extensive as claimed nor did it reach as far back as 1996. He added at [251] that a family of marks may make, as a matter of common sense and law, confusion more likely, but it did not make it inevitable.
He noted that both sides had made extensive searches of their correspondence and other records. These identified just 150 instances of possible confusion over 10 years. Judge Briggs set out the factors that negated average consumer confusion at [269]:
"(i) the second word of the signs complained of is visually, aurally and conceptually different to those in the family of marks and easyGroup; (ii) with the exception of 'easy4men', the easyGroup mark, including those in the easyGroup family of marks, use one word after the word 'easy'; (iii) that second word begins with a capital; (iv) the get-up is distinctly different to those marks complained of; (v) the low distinctiveness of the word 'easy' and (vi) the incidences of actual confusion identified by the Claimant are insignificant."
"(i) the second word of the signs complained of is visually, aurally and conceptually different to those in the family of marks and easyGroup; (ii) with the exception of 'easy4men', the easyGroup mark, including those in the easyGroup family of marks, use one word after the word 'easy'; (iii) that second word begins with a capital; (iv) the get-up is distinctly different to those marks complained of; (v) the low distinctiveness of the word 'easy' and (vi) the incidences of actual confusion identified by the Claimant are insignificant."
Infringement under s.10 (3)
Judge Briggs referred to paras [288] to [301] of Mr Justice Arnold's decision in W3 for the legal framework for a claim made under s.10 (3) of the Trade Marks Act 1994:
"Infringement under Article 9 (1) (c) in the UK
[288] easyGroup contends that W3 has infringed easyGroup's EU trade marks other than easyDorm, EASYOFFICE and easyProperty by use of the EasyRoommate signs in the UK under Article 9 (1) (c) of the Regulation. Again, the claim for infringement of the EASY trade mark falls away. An important distinction between easyGroup's claim under Article 9 (1) (c) and its claim under Article 9 (1) (b) is that, for the purposes of the claim under Article 9 (1) (c), it relies upon the admitted reputation of the EASYJET trade mark in relation to passenger airline services.
The law
[289] In Case C-292/00 Davidoff & Cie SA v Gofkid Ltd [2003] ECR I-389 and Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537 the CJEU held that, although the wording of Article 9 (1) (c) of the Regulation and Article 5 (2) of the Directive refer to goods or services which are not similar to those for which the mark is registered, this form of protection also extends to cases where a sign which is identical with or similar to the trade mark is used in relation to goods or services identical with or similar to those covered by the trade mark. The Court of Justice also held in Adidas-Salomon that it is not necessary for the trade mark proprietor to establish a likelihood of confusion in order to succeed in such a claim.
[290] Accordingly, in order to establish infringement under Article 9 (1) (c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least 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. In the present case, there is no issue as to ingredients (ii), (iii), (iv), (v) or (vi).
[291] Reputation of the trade mark. This is not a particularly onerous requirement. As the Court of Justice explained in Case C-375/97 General Motors Corp v Yplon SA [1999] ECR I-5421:
'[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 Article 5 (2) of the Directive that the trade mark 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.'
The law
[289] In Case C-292/00 Davidoff & Cie SA v Gofkid Ltd [2003] ECR I-389 and Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537 the CJEU held that, although the wording of Article 9 (1) (c) of the Regulation and Article 5 (2) of the Directive refer to goods or services which are not similar to those for which the mark is registered, this form of protection also extends to cases where a sign which is identical with or similar to the trade mark is used in relation to goods or services identical with or similar to those covered by the trade mark. The Court of Justice also held in Adidas-Salomon that it is not necessary for the trade mark proprietor to establish a likelihood of confusion in order to succeed in such a claim.
[290] Accordingly, in order to establish infringement under Article 9 (1) (c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least 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. In the present case, there is no issue as to ingredients (ii), (iii), (iv), (v) or (vi).
[291] Reputation of the trade mark. This is not a particularly onerous requirement. As the Court of Justice explained in Case C-375/97 General Motors Corp v Yplon SA [1999] ECR I-5421:
'[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 Article 5 (2) of the Directive that the trade mark 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.'
[292] Although in the case of an EU trade mark the mark must be known by a significant part of the relevant public in a substantial part of the territory of the EU, in an appropriate case the territory of a single Member State may suffice for this purpose: see Case C-301/07 PAGO International GmbH [2009] ECR I-9429.
[293] Where the EU trade mark has a reputation in some Member States but not others, it would appear to follow as a matter of logic that there can only be a claim for infringement under Article 9(1)(c) through use of a sign in those Member States where the trade mark has a reputation. It is presently unclear from the jurisprudence of the CJEU whether this is the law, however. The reasoning of the CJEU in Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-2801, Case C-223/15 combit Software GmbH v Commit Business Solutions Ltd [EU:C:2016:719], [2016] Bus LR 1393 and Case C-93/16 Ornua Co-operative Limited v Tindale & Stanton Ltd España SL [EU:C:2017:571], [2017] ETMR 37 suggests that it is. On the other hand, the judgments of the CJEU in PAGO and Case C-125/14 Iron & Smith kft v Unilever NV [EU:C:2015:539], [2015] Bus LR 1025 suggest that, at least in some circumstances, a claim for infringement may lie in respect of use in Member States where the trade mark does not have a reputation. Fortunately, neither side contends that it is necessary to try to resolve this conundrum in the present case.
[294] Link. 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] and 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].
[295] Detriment to the distinctive character of the trade mark. In Intel the Court of Justice held as follows in relation to this type of injury:
[293] Where the EU trade mark has a reputation in some Member States but not others, it would appear to follow as a matter of logic that there can only be a claim for infringement under Article 9(1)(c) through use of a sign in those Member States where the trade mark has a reputation. It is presently unclear from the jurisprudence of the CJEU whether this is the law, however. The reasoning of the CJEU in Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-2801, Case C-223/15 combit Software GmbH v Commit Business Solutions Ltd [EU:C:2016:719], [2016] Bus LR 1393 and Case C-93/16 Ornua Co-operative Limited v Tindale & Stanton Ltd España SL [EU:C:2017:571], [2017] ETMR 37 suggests that it is. On the other hand, the judgments of the CJEU in PAGO and Case C-125/14 Iron & Smith kft v Unilever NV [EU:C:2015:539], [2015] Bus LR 1025 suggest that, at least in some circumstances, a claim for infringement may lie in respect of use in Member States where the trade mark does not have a reputation. Fortunately, neither side contends that it is necessary to try to resolve this conundrum in the present case.
[294] Link. 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] and 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].
[295] Detriment to the distinctive character of the trade mark. In Intel the Court of Justice held as follows in relation to this type of injury:
i) The more immediately and strongly the trade mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is detrimental to the distinctive character of the mark: [67].
ii) The stronger the earlier mark's distinctive character and reputation, the easier it will be to accept that detriment has been caused to it: [69].
iii) The existence of a link between the sign and the mark does not dispense the trade mark proprietor from having to prove actual and present injury to its mark, or a serious likelihood that such an injury will occur in the future: [71].
iv) The more 'unique' the trade mark, the greater the likelihood that use of a later identical or similar mark will be detrimental to its distinctive character: [74].
v) Detriment to the distinctive character of the trade mark is caused when the mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor is weakened. It follows that proof that the use of the sign 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 mark is registered consequent on the use of the sign, or a serious likelihood that such a change will occur in the future: [77].
[296] In Case C-383/12 Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market [EU:C:2013:741] the Court of Justice re-iterated that proof that the use of the sign is, or would be, detrimental to the distinctive character of the trade mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the mark is registered consequent on the use of the sign, or a serious likelihood that such a change will occur in the future. In this connection, the Court held:
'[42] Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit 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, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case.'
'[42] Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit 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, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case.'
[297] Detriment to the repute of the trade mark. The Court of Justice described detriment to the reputation of the earlier mark in Case C-487/07 L'Oréal SA v Bellure NV [2009] ECR I-5185 at [40] as follows:
'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.'
[298] Unfair advantage. The Court of Justice described taking unfair advantage of the distinctive character or repute of a trade mark in L'Oréal v Bellure at [41] as follows:
'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.'
[299] The Court of Justice explained the correct approach to determining whether unfair advantage has been taken of the distinctive character or repute of the trade mark in that case as follows:
'[44] In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
[45] In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
…
[49] In that regard, 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.'
[45] In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
…
[49] In that regard, 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.'
[300] It is clear both from the wording of Article 5 (2) of the Directive and Article 9 (1) (c) of the Regulation and from the case law of the Court of Justice interpreting these provisions that this aspect of the legislation is directed at a particular form of unfair competition. It is also clear from the case law both of the Court of Justice and of the Court of Appeal in this country that the defendant's conduct is most likely to be regarded as unfair where he intends to take advantage of the reputation and goodwill of the trade mark. Nevertheless, in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [2014] FSR 39 at [80] I concluded that there is nothing in the case law to preclude the court from holding in an appropriate case that the use of a sign the objective effect of which is to enable the defendant to benefit from the reputation and goodwill of the trade mark amounts to unfair advantage even if it is not proved that the defendant subjectively intended to exploit that reputation and goodwill. Counsel for W3 did not challenge that conclusion.
[301] Due cause. The CJEU held in Case C-65/12 Leidseplein Beheer BV v Red Bull GmbH [EU:C:2014:49], [2014] Bus LR 280 at [60] that:
'Article 5(2) of [the Directive] must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of 'due cause' within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:
– how that sign has been accepted by, and what its reputation is with, the relevant public;
– the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and
– the economic and commercial significance of the use for that product of the sign which is similar to that mark.'"
Judge Briggs held at [277] that easyJet had a reputation during the relevant period but easyGroup's was weak. However, he found on a global assessment and on the balance of probabilities at [278] that the average consumer would not make a link between the signs complained of and the eastJet and easyGroup marks for the following reasons:
"First, easyJet is reputationally and substantively a passenger airline. Secondly, easylife is factually a consumer facing retailer of home products. Thirdly, easyGroup is not consumer facing as it is an umbrella organisation. Fourthly, the word “easy” is not distinctive. It is descriptive. Fifthly, the get up of the signs complained of is very different to the distinctive get up of the Claimant. Lastly, there is no evidence that easylife operated with knowledge of easyGroup operations or existence until it received a solicitor’s letter."
"First, easyJet is reputationally and substantively a passenger airline. Secondly, easylife is factually a consumer facing retailer of home products. Thirdly, easyGroup is not consumer facing as it is an umbrella organisation. Fourthly, the word “easy” is not distinctive. It is descriptive. Fifthly, the get up of the signs complained of is very different to the distinctive get up of the Claimant. Lastly, there is no evidence that easylife operated with knowledge of easyGroup operations or existence until it received a solicitor’s letter."
He continued at [279]:
"I find on a “global assessment” that (a) despite praying in aid the family mark, no link has been established on the facts; (b) there is insufficient evidence of detriment to the distinctive character of the Claimant’s trade marks. There is no evidence of a change in the economic behaviour of the average consumer or serious likelihood of a change in the future; (c) insufficient evidence has been adduced to support detriment to the repute and no evidence that the Claimant’s reputation has been diminished by the average consumer who, as I have found, is not confused; and (d) given the evidence of Mr Caplan and making a global assessment the inference of unfair advantage cannot be made on the facts."
"I find on a “global assessment” that (a) despite praying in aid the family mark, no link has been established on the facts; (b) there is insufficient evidence of detriment to the distinctive character of the Claimant’s trade marks. There is no evidence of a change in the economic behaviour of the average consumer or serious likelihood of a change in the future; (c) insufficient evidence has been adduced to support detriment to the repute and no evidence that the Claimant’s reputation has been diminished by the average consumer who, as I have found, is not confused; and (d) given the evidence of Mr Caplan and making a global assessment the inference of unfair advantage cannot be made on the facts."
It followed that there had been no tarsnishment or dilution of the reputation of the claimant's marks. The claim for trade mark infringement was dismissed.
Passing off
Judge Briggs referred to Lord Oliver's speech in Reckitt & Colman Products Limited v Borden Inc [1990] RPC 341, [1990] 1 All ER 873, [1990] WLR 491, [1990] 1 WLR 491, [1990] UKHL 12 at 406:
He adopted the House of Lords' definition of goodwill in Inland Revenue Commissioners v Muller & Co 's Margarine, Limited [1901] UKLawRpAC 20; (1901) AC 217 (20 May 1901) as “the benefit and advantage of the good name, reputation, and connection of a business.” After referring to Lord Justice Arnold's judgment in Glaxo Wellcome v Sandoz [2019] EWHC 2545 (Ch), the judge directed himself that eastGroup had to demonstrate to the satisfaction of the court that Easylife has deceived:
“[158] As Jacob J forcefully stated in Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1994] 1 WLR 1564 at 1569-1570:
“[158] As Jacob J forcefully stated in Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1994] 1 WLR 1564 at 1569-1570:
'I turn to consider the law and begin by identifying what is not the law. There is no tort of copying. There is no tort of taking a man's market or customers. Neither the market nor the customers are the plaintiff's to own. There is no tort of making use of another's goodwill as such. There is no tort of competition. …
At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular. Over the years passing off has developed from the classic case of the defendant selling his goods as and for those of the plaintiff to cover other kinds of deception, e.g. that the defendant's goods are the same as those of the plaintiff when they are not, e.g. Combe International Ltd v. Scholl (UK) Ltd [1980] R.P.C. 1; or that the defendant's goods are the same as goods sold by a class of persons of which the plaintiff is a member when they are not, e.g. Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1979] A.C. 29 (the Advocaat case). Never has the tort shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter the field of honest competition, declared unlawful for some reason other than deceptiveness. Why there should be any such reason I cannot imagine. It would serve only to stifle competition.
The foundation of the plaintiff's case here must therefore lie in deception…'
[159]. It is not enough if members of the public are merely caused to wonder. As Jacob LJ explained in Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244, [2007] RPC 5:
'[16]. The next point of passing off law to consider is misrepresentation. Sometimes a distinction is drawn between ‘mere confusion’ which is not enough, and ‘deception’, which is. I described the difference as ‘elusive’ in Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40. I said this, [111]:
‘Once the position strays into misleading a substantial number of people (going from ‘I wonder if there is a connection’ to ‘I assume there is a connection’) there will be passing off, whether the use is as a business name or a trade mark on goods.’
[17] This of course is a question of degree—there will be some mere wonderers and some assumers—there will normally (see below) be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.
[18] The current (2005) edition of Kerly contains a discussion of the distinction at paras 15–043 to 15–045. It is suggested that:
‘The real distinction between mere confusion and deception lies in their causative effects. Mere confusion has no causative effect (other than to confuse lawyers and their clients) whereas, if in answer to the question: “what moves the public to buy?”, the insignia complained of is identified, then it is a case of deception.’
[19] Although correct as far as it goes, I do not endorse that as a complete statement of the position. Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too—for instance those in the Buttercup case. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word ‘really’.'
[160] In order for there to be passing off, a substantial number of members of the public must be misled: see Neutrogena Corp v Golden Ltd [1996] RPC 473 at 493-494 (Morritt LJ). Furthermore, it is not enough that careless or indifferent people may be led into error: see Norman Kark Publications Ltd v Odhams Press Ltd [1962] 1 WLR 380 at 383 (Wilberforce J).
[161] The correct approach to this question was well described by Jacob J at first instance in Neutrogena at 482:
'The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall ‘jury’ assessment involving a combination of all these factors, see ‘GE’ Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Colman Products Ltd. v. Borden Inc. [1990] RPC 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more ‘it depends on the evidence.’”
Finally, Judge Briggs referred to Lord Justice Millett's judgment in Harrods Ltd v Harrodian School Ltd [1996] RPC 697:
“The absence of a common field of activity, therefore, is not fatal; but it is not irrelevant either. In deciding whether there is a likelihood of confusion, it is an important and highly relevant consideration
'...whether there is any kind of association, or could be in the minds of the public any kind of association, between the field of activities of the plaintiff and the field of activities of the defendant':
Annabel's (Berkeley Square) Ltd. v. G. Schock (trading as Annabel S Escort Agency) [l9721 R.P.C. 838 at page 844 per Russell L.J.
In [Lego System A/S v. Lego M. Lemelstrich Ltd. [1983] FSR 15] Falconer J. likewise held that the proximity of the defendant's field of activity to that of the plaintiff was a factor to be taken into account when deciding whether the defendant's conduct would cause the necessary confusion.
Where the plaintiff's business name is a household name the degree of overlap between the fields of activity of the parties’ respective businesses may often be a less important consideration in assessing whether there is likely to be confusion, but in my opinion it is always a relevant factor to be taken into account.
Where there is no or only a tenuous degree of overlap between the parties’ respective fields of activity the burden of proving the likelihood of confusion and resulting damage is a heavy one. In Stringfellow v. McCain Foods (G.B.) Ltd. [1984] R.P.C. 501 Slade L.J. said (at page 535) that the further removed from one another the respective fields of activities, the less likely was it that any member of the public could reasonably be confused into thinking that the one business was connected with the other; and he added (at page 545) that:
';even if it considers that there is a limited risk of confusion of this nature, the court should not, in my opinion, readily infer the likelihood of resulting damage to the plaintiffs as against an innocent defendant in a completely different line of business. In such a case the onus falling on plaintiffs to show that damage to their business reputation is in truth likely to ensue and to cause them more than minimal loss is in my opinion a heavy one.'”
Judge Briggs rejected the claim for passing off:
"[291. In my judgment this is not a case where a substantial number of the public will be going from ‘I wonder if there is a connection’ to ‘I assume there is a connection’. Standing back and taking account of the factual matrix, the respective fields associated with the trade marks of easyGroup and the marks complained of, how the relative businesses are conducted I find objectively that a substantial number of the public will not be induced to buy goods from easylife by mistaking the insignia of easyGroup.
[292] In my judgment there is no convincing evidence to support a finding that that a substantial number of the public would be deceived in these different fields of activities. The high point of the Claimant’s case is the use of the word “easy”. That in my judgment is insufficient and is not improved by other evidence.
[293] I find that there is no real likelihood that the use of the signs complained of has been or will be damaging to the Claimant's goodwill or will divert trade from it. easyGroup has failed to discharge the heavy burden to show false representation so that the public believe that the goods or services of easylife are that of easyGroup or otherwise connected in the relevant economic way: Harrods Ltd [547]."
"[291. In my judgment this is not a case where a substantial number of the public will be going from ‘I wonder if there is a connection’ to ‘I assume there is a connection’. Standing back and taking account of the factual matrix, the respective fields associated with the trade marks of easyGroup and the marks complained of, how the relative businesses are conducted I find objectively that a substantial number of the public will not be induced to buy goods from easylife by mistaking the insignia of easyGroup.
[292] In my judgment there is no convincing evidence to support a finding that that a substantial number of the public would be deceived in these different fields of activities. The high point of the Claimant’s case is the use of the word “easy”. That in my judgment is insufficient and is not improved by other evidence.
[293] I find that there is no real likelihood that the use of the signs complained of has been or will be damaging to the Claimant's goodwill or will divert trade from it. easyGroup has failed to discharge the heavy burden to show false representation so that the public believe that the goods or services of easylife are that of easyGroup or otherwise connected in the relevant economic way: Harrods Ltd [547]."
Conclusion
This was a closely reasoned and well documented judgment. There were no new or difficult points of law but there were a lot of witnesses and detailed analysis of their evidence. As there are many lengthy passages from the leading authorities this judgment will be a useful resource for skeleton arguments. Anyone wishing to discuss this article or any of the issues arising in this case may call me on 020 7404 5252 during office hours or send me a message through my contact form.
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