Trade Marks and Passing off - Easygroup Ltd v Easy Live (Services) Ltd
Business and Property Courts of England and Wales, Intellectual Property List (ChD) (Sir Anthony Mann) Easygroup Ltd v Easy Live (Services) Ltd. and others [2022] EWHC 3327 (Ch) (21 Dec2022)
This was an action for trade mark infringement and passing off and a counterclaim for the revocation of some of the marks on which the claimant relied in respect of certain specified services. The claimant, Easygroup Ltd ("Easygroup"), owned the marks listed in Appendix 1 to the judgment of Sir Anthony Mann in Easygroup Ltd v Easy Live (Services) Ltd and others [2022] EWHC 3327. Easygroup complained that Easy Live (Services) Ltd. ("ELA"), had infringed those marks by supplying computer software for use in auctions and conducting online auctions under the signs that appear in Appendix 2 to the judgment. ELA sought to revoke easyGroup, easyMoney, easyProperty and Easy Networks under s.46 (1) (a) and (b) of the Trade Marks Act 1994 in relation to certain services. The action and counterclaim were tried by Sir Anthony on 5, 6, 7, 12 and 13 Oct 2022. He delivered judgment on 21 Dec 2022.
Revocation
The judge explained at para [32] that he would start with the counterclaim because revocation would affect the infringement claim.It was common ground that the leading case on whether there had been genuine use of a trade mark was Walton International Ltd and Another v Verweij Fashion BV [2018] EWHC 1608 (Ch);[2018] ETMR 34. Sir Anthony quoted paras [114] and [115] of Mr Justice Arnold's judgment in that case:
“[114- The law with respect to genuine use. The CJEU has considered what amounts to “genuine use” of a trade mark in a series of cases [citations omitted]:
............................................
[115] The principles established by these cases 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: [citations omitted].
[115] The principles established by these cases 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: [citations omitted].
...........................
(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: [citations omitted]
(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 …. Accordingly, affixing of a trade mark on goods as a label of quality is not genuine use unless 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: ….
(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: … [citations omitted]
(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: …[citations omitted]
.............................
(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: … [citations omitted].
.....................................
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: …."
(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: [citations omitted]
(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 …. Accordingly, affixing of a trade mark on goods as a label of quality is not genuine use unless 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: ….
(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: … [citations omitted]
(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: …[citations omitted]
.............................
(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: … [citations omitted].
.....................................
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: …."
As ELA had alleged that Easygroup had established use only within narrow categories of the specified goods or services for which the attacked marks had been registered, Sir Anthony referred to paras [245] to [248] of Lord Justice Kitchin's judgment in Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834:
“[245] First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period.
[246] Secondly, the goods or services for which the mark is registered must be considered. If the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories.
[247] Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way.
[248] Fourthly, these issues are to be considered from the viewpoint of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark.”
Referring to para [41] of the General Court's judgment in Charlott France Entre Luxe et Tradition v OHIM, his lordship added that it is not necessary to prove continuous and uninterrupted use for 5 years in order to save a mark from revocation. It is sufficient that the mark was used during part of the relevant period. He also noted that use in advertisements for the services in question is "use" for those purposes (para [42] of Standard International Management v EUIPO [2022] ETMR 44). As to the nature and quality of the evidence required and the burden of proof, Sir Anthony referred to paras [19] to [22] of Daniel Alexander QC's decision in Plymouth Life Centre Trade Mark [2013] RPC 34:
“[19] For the tribunal to determine in relation to what goods or services there has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. Use should be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.
[20] Providing evidence of use is not unduly difficult. If an undertaking is sitting on a registered trade mark, it is good practice in any event from time to time review the material that it has to prove use of it. Courts and tribunals are not unduly harsh as to the evidence they are prepared to accept as establishing use.
“[19] For the tribunal to determine in relation to what goods or services there has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. Use should be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.
[20] Providing evidence of use is not unduly difficult. If an undertaking is sitting on a registered trade mark, it is good practice in any event from time to time review the material that it has to prove use of it. Courts and tribunals are not unduly harsh as to the evidence they are prepared to accept as establishing use.
................................
[22] The burden lies on the registered proprietor to prove use. However, that and other cases show that there is no particular way in which use must be established. (…) it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more, so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive.”
[22] The burden lies on the registered proprietor to prove use. However, that and other cases show that there is no particular way in which use must be established. (…) it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more, so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive.”
Between para [46] and [109] Sir Anthony considered the evidence of use in respect of the specified services of the attacked marks. He concluded at [109] that all the contested services within those marks fell to be revoked except for “Data communications services” under the Easy Networks mark.
Infringement
The judge's finding on revocation disposed of much of the infringement claim. However, the claim for infringement of the Easy Networks mark remained and his lordship made findings on infringement of the other marks in case his decision on revocation was wrong. Easygroup relied on s.10 (2) and (3) of the Trade Marks Act 1994. The allegations in respect of infringement of the Easy Networks mark under s.10 (2) were summarized in a "Table of Alleged Similarities" which was appended to the judgment as Appendix 3.
S.10 (2)
This subsection provides:
"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."
"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."
“[7]. In order to establish infringement under art.9 (2) (b) of the Regulation/art.10 (2) (b) of the Directive, 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)–(v).
[8] The manner in which the requirement of a likelihood of confusion in art.9 (2) (b) of the Regulation and art.10 (2) (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 Court of Justice of the EU 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 was approved by this court in Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41; [2016] FSR 30 at [31]–[32] (Kitchin LJ), 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;
(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.'
[9] 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: … As Kitchin LJ (with whom Sir John Thomas PQBD and Black LJ agreed) put it in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [87]:
'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.'
[10] It is well-established that there are two main kinds of confusion which trade mark law aims to protect a trade mark proprietor against (see in particular Sabel BV v Puma AG (C-251/95) [1997] ECR I-6191 at [16]). The first, often described as “direct confusion”, is where consumers mistake the sign complained of for the trade mark. The second, often described as “indirect confusion”, is where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods or services denoted by the trade mark.
[11] In LA Sugar Ltd v Back Beat Inc (O/375/10) Iain Purvis QC sitting as the Appointed Person said:
'[16] Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning—it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: ‘The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark’.
[17] Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories:
(a) where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (‘26 RED TESCO’ would no doubt be such a case).
(b) where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as ‘LITE’, ‘EXPRESS’, ‘WORLDWIDE’, ‘MINI’ etc.).
(c) where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (‘FAT FACE’ to ‘BRAT FACE’ for example).'
[12] This is a helpful explanation of the concept of indirect confusion, which has frequently been cited subsequently, but as Mr Purvis made clear it was not intended to be an exhaustive definition. For example, one category of indirect confusion which is not mentioned is where the sign complained of incorporates the trade mark (or a similar sign) in such a way as to lead consumers to believe that the goods or services have been co-branded and thus that there is an economic link between the proprietor of the sign and the proprietor of the trade mark (such as through merger, acquisition or licensing).’”
Sir Anthony also adopted the following summary at para [79] of Comic:
It was common ground that para [56] of Lord Justice Arnold's judgment in Sky plc v Skykick UK Ltd [2020] EWHC 990 set out the applicable principles on interpreting a specification and comparing goods and services:
"(a) General terms (including the general indications of class heading of the Nice Classification) are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services.
(b) In the case of services, the terms used should not be interpreted widely, but confined to the core of the possible meanings attributable to the terms.
"(a) General terms (including the general indications of class heading of the Nice Classification) are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services.
(b) In the case of services, the terms used should not be interpreted widely, but confined to the core of the possible meanings attributable to the terms.
(c) An unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers.
(d) A term which cannot be interpreted is to be disregarded."
(d) A term which cannot be interpreted is to be disregarded."
Finally, Sir Anthony quoted the Court of Justice's judgment in Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (C-39/97) EU:C:1998:442; [1999] FSR 332; [1999] RPC 117:
"In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary."
Date of Assessment of Infringement where there is a Limitation Period
S.2 of the Limitation Act 1980 provides:
"An action founded on tort shall not be brought after the expiration of six years from the date on which the cause of action accrued."
"An action founded on tort shall not be brought after the expiration of six years from the date on which the cause of action accrued."
Relying on Mrs Justice Bacon's dicta in Easygroup Ltd v Nuclei Ltd [2022] ETMR 31 and Mr Justice Arnold's in Walton International v Verweij Fashion [2018] RPC 19, [2018] EWHC 1608 (Ch), [2018] ETMR 34, Easygroup that where the use of a sign commenced more than 6 years (that is to say, the limitation period under s.2 of the 1980 Acr) before the claim form, then the relevant date for the assessment of an infringement is 6 years before the date of the claim form rather than the date of the first infringement. Sir Anthony Mann disagreed. He said at [126]:
"I therefore (with all due respect to the two previous judges who have adverted to the point) conclude that the date for assessment is the first use of the allegedly infringing sign (absent, as I have said, some change in use which requires a re-assessment)."
"I therefore (with all due respect to the two previous judges who have adverted to the point) conclude that the date for assessment is the first use of the allegedly infringing sign (absent, as I have said, some change in use which requires a re-assessment)."
Average Consumer
Readers will recall that Lord Justice Kitchin said in Comic that the likelihood of confusion must be judged through the eyes of the average consumer of the goods or services in question. The learned judge adopted Mr Recorder Douglas Campbell QC's definition of an average consumer in easyGroup Ltd v Easyway SBH [2021] EWHC 2007 (IPEC):
“[18]….the average consumer for the purposes of an infringement claim must be a consumer of the goods and/or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign …The average consumer is determined by reference to the goods and services for which the trade mark is registered, not by reference to the quirks of any individual defendant's business”
Later in his judgment, the recorder said:
"The level of attention and care to be paid is significant. The level of attention displayed by the average consumer is likely to vary depending on the nature of the goods or services and how they are acquired. Thus, for example (and pertinent to this case) a professional acquiring services or goods can be expected to pay more attention than a layman in a shop.”
“[18]….the average consumer for the purposes of an infringement claim must be a consumer of the goods and/or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign …The average consumer is determined by reference to the goods and services for which the trade mark is registered, not by reference to the quirks of any individual defendant's business”
Later in his judgment, the recorder said:
"The level of attention and care to be paid is significant. The level of attention displayed by the average consumer is likely to vary depending on the nature of the goods or services and how they are acquired. Thus, for example (and pertinent to this case) a professional acquiring services or goods can be expected to pay more attention than a layman in a shop.”
Sir Anthony added at [130]:
"It seems to have been accepted in this case (and in any case I find) that there are two types of average consumer or relevant public, depending on the marks and services in issue - managers of auction houses, and those bidding or considering bidding in auctions. The former have some of the attributes of a professional and fall to be treated as such, and therefore are notionally expected to pay more attention than a lay consumer. The latter are general members of the public interested in auctions and the subject of chattel auctions. The average bid in three months in 2020 has been said to be about £250, which reflects the fact that bidders include non-specialist members of the general public."
"It seems to have been accepted in this case (and in any case I find) that there are two types of average consumer or relevant public, depending on the marks and services in issue - managers of auction houses, and those bidding or considering bidding in auctions. The former have some of the attributes of a professional and fall to be treated as such, and therefore are notionally expected to pay more attention than a lay consumer. The latter are general members of the public interested in auctions and the subject of chattel auctions. The average bid in three months in 2020 has been said to be about £250, which reflects the fact that bidders include non-specialist members of the general public."
Family of Marks
As the claimant sought to enforce a number of marks that incorporated the adjective "easy", the learned judge adopted para [234] of Mr Justice Arnold's judgment in W3 Ltd v Easygroup Ltd and another [2018] FSR 16, [2018] EWHC 7 (Ch):
'[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 trademark 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). '”
ELA's Signs
These appear in the second column of Appendix 2 to the judgment and are numbered 1 to 4 in the first column, The dates of first use appear in the right-hand column. The judge held at [145] that the assessment dates for each of those signs were as follows: 2010 for Signs 1 and 2, 2016 for Sign 3 and March 2019 for Sign 4.
Extent of the Family
I have already noted that a family of marks may increase the likelihood of confusion. ELA accepted that Easygroup had established a family of marks but contended that it was limited to travel and related services. Sir Anthony held at para [150] that the Easygroup family presence went a little beyond travel and related services but not by much and thus did not significantly increase the likelihood of confusion,
Whether there had been an Infringement under s.10 (2)
Sir Anthony listed the probanda listed at para [7] of Lord Justice Arnold's judgment in Liverpool Gin which I mentioned above. It was not disputed that the first 3 applied. His lordship considered the similarities of ELA's signs to the registered marks between paras [156] and [158]. He considered the similarities between ELA's services and the services for which Easygroup's marks had been registered between [156] and [180]. He concluded at para [181] that the claim failed because there was no similarity of relevant services.
S. 10 (3)
S.10 (3) of the Trade Marks Act 1994 provides:
"A person infringes a registered trade mark if he uses in the course of trade a sign which—
(a) is identical with or similar to the trade mark, and
.......................
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.”
It was common ground that Mr Justice Arnold had considered the basic requirements for liability under that provision between paras [289] and [300] of his judgment in W3:
“289. In Davidoff & Cie SA v Gofkid Ltd (C-292/00) [2003] ECR I-389 and Adidas-Salomon AG v Fitnessworld Trading Ltd (C-408/01) [2003] ECR I-12537 the CJEU held that, although the wording of art.9 (1) (c) of the Regulation and art.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 art.9 (1) (c) of the Regulation [which is the equivalent of section 10 (3), 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. …
[291] Reputation of the trade mark. This is not a particularly onerous requirement. As the Court of Justice explained in General Motors Corp v Yplon SA (C-375/97) [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.'
....
[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 Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) [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 Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (C-383/12) [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’.
[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.'
[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 Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) [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 Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (C-383/12) [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’.
[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’Oreal 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.
…
[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.'
[300] It is clear both from the wording of art.5 (2) of the Directive and art.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.”
[300] It is clear both from the wording of art.5 (2) of the Directive and art.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.”
The learned judge also referred to the General Court's guidance on the concept of unfair advantage in Case T-310/09: IG Communications Ltd v OHIM (Citigate intervening):
“[110] The concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the services covered by the mark applied for, with the result that the marketing of those services can be made easier by that association with the earlier mark with a reputation.
[111] Accordingly, the risk that the use without due cause of the mark applied for will take unfair advantage of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a repute.”
Finally, his lordship referred to para [107] of Lord Justice Floyd's judgment in Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211; [2019] Bus LR 1728:
“[107] So far as a requirement for a change in economic behaviour is concerned, the CJEU has held 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 trade mark is registered or a serious likelihood that such change will occur in the future: see Case C-383-12 Environmental Manufacturing LLP v OHIM (judgment of 14 November 2013) (at [34]–[43]). It by no means follows that there is a requirement for evidence of a change in the economic behaviour of consumers of the trade mark proprietor's goods or services in order to establish the taking of unfair advantage of the distinctive character or repute of the trade mark. In my judgment, it should be sufficient to show a change in economic behaviour of customers for the defendants' goods or services in order to show that the use of the sign is taking unfair advantage. In Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch); [2014] FSR 39, Arnold J proceeded on an assumption to that effect as a result of a concession by counsel (see paragraph 82) but I consider the concession to be correctly made. I do not think, however, that change of economic behaviour provides the answer to this case. The relevant economic behaviour must be that which occurs in response to ASI's use of the sign ARGOS in relation to the service of the provision of advertising space. Had the sign not been used, internet users would neither have arrived at the site nor clicked on the ads. Even if the arrival at the site is not a relevant change of economic behaviour, clicking on the ads must amount to such a change.”
Reputation
Addressing the first probandum between paras [200] and [205], his lordship concluded that the easyJet, Easy Networks and easyMoney marks had a reputation for the purposes of s,10 (3) but the others did not.
Use
There was no dispute that the signs in Appendix 2 had been "used" within the meaning of the Act in the UK without Easygroup's consent. It was agreed that such use had been in relation to goods and services.
Similarity
The judge relied on his findings of similarity between the defendant's signs and easyJet, Easy Networks and easyMoney marks for the purpose of s.10 (2).
Link
His lordship directed himself at [209] that there must be a link between those marks and the signs in the mind of the average consumer. In deciding whether that was the case he had to consider all the circumstances, including the degree of similarity between the marks and signs and the similarities of the services. It was common ground that, unlike a s.10 (2) claim, it was not necessary to establish a similarity of services as between a mark and a sign, but such a similarity could be capable of supporting the existence of such a link. In this case, Sir Anthony perceived a link between the relevant marks and signs 2 and 3 but not between those marks and signs 1 and 4.
The reason he found a link with signs 2 and 3 is that the style of the sign had changed. The individual words were closed up. The word “easy” lost its capital letter and was italicized and emboldened in a font which looked significantly closer to the font used by Easygroup. The judge held that those changes were considered and deliberate. The original conception of the Sign 2 was to produce something which at least alluded to the Easy branding and the similarities were not accidental.
The reason he found a link with signs 2 and 3 is that the style of the sign had changed. The individual words were closed up. The word “easy” lost its capital letter and was italicized and emboldened in a font which looked significantly closer to the font used by Easygroup. The judge held that those changes were considered and deliberate. The original conception of the Sign 2 was to produce something which at least alluded to the Easy branding and the similarities were not accidental.
Unfair Advantage
Having found a link between the relevant marks and signs 2 and 3, the judge held that unfair advantage had been taken of the distinctive character of those marks. He explained his reasoning at pars [217]:
"The whole purpose of the mimicry is to operate on the mind of the consumer. A consumer, and particularly the “retail” bidding consumer (though probably not the auctioneer) would at least look on ELA with more favour, or perhaps less disfavour. This was an intended consequence, and amounts, if required, to a change in the consumer’s economic behaviour."
"The whole purpose of the mimicry is to operate on the mind of the consumer. A consumer, and particularly the “retail” bidding consumer (though probably not the auctioneer) would at least look on ELA with more favour, or perhaps less disfavour. This was an intended consequence, and amounts, if required, to a change in the consumer’s economic behaviour."
Whether there had been an Infringement under s.10 (3)
Sir Anthony held at para [220] that there had been an infringement of the easyJet and possibly easyMoney marks for the period when signs 2 and 3 were used by ELA though some of that use may have taken place outside the limitation period.
Passing off
As Easygroup had partially succeeded in its trade mark infringement claim it was not clear whether it needed a decision on its passing off claim but the judge dealt with it anyway. The claimant confined its claim to its easyJet and easyProperty marks. ELA admitted that goodwill accrued to the easyJet mark and the judge found that there was goodwill had accrued to the easyProperty mark by the time sign 3 was in use. He also found that there had been an actionable misrepresentation but no likelihood of damage. He, therefore, dismissed the passing-off claim.
ELA's Trade Mark
Easygroup had sought a declaration that ELA's trade mark "EASY LIFE AUCTION" was invalid. The parties agreed that the fate of that claim rested on the infringement and passing off issues. Both sides' submissions on the point were brief and the judge did not find them particularly helpful. He questioned whether the claim could survive in view of his findings on the issue but declined to deal with it without further submissions.
Comment
This case does not make any new law except perhaps on the unfair advantage and need to prove damage for passing-off points but it contains a comprehensive review of the case law on s.10 (2) and (3) of the Trade Marks Act 1994.
Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page.
Comments