Trade Marks - easyGroup Ltd v Nuclei Ltd
|Royal Courts of Justice|
Court of Appeal (Lords Justices Arnold and Nugee and Sir Christopher Floyd) easyGroup Ltd v Nuclei Ltd and others  EWCA Civ 1247 (27 Oct 2023)
This was an appeal by easyGroup Ltd. ("easyGroup") against the order of Mrs Justice Bacon in easyGroup Ltd v Nuclei Ltd and others  EWHC 901 (Ch) of 13 April 2022, She dismissed easyJet's claim for trade mark infringement and revoked the marks on which it had relied. Those marks were UK trade mark No. 2313529A and EU trade marks Nos. 2907509 and 11624376. The appeal came on before Lords Justices Arnold and Nugee and Sir Christopher Floyd on 10 and 11 Oct 2023. The hearing was filmed and can be viewed on YouTube (see the first day of the hearing and the second day). At the end of the hearing, the Court announced that it would dismiss the appeal and give its reasons later. Their lordships handed down those reasons on 27 Oct 2023 (see easyGroup Ltd v Nuclei Ltd and others  EWCA Civ 1247 (27 Oct 2023),The Action and Counterclaim
easyGroup's claim for infringement of UK2313529A was brought under s.10 (1) and (2) of the Trade Marks Act 1994. Its claim for infringement of EU2907509 and EU11624376 was brought under art 9 (2) (a) and (b) of the EU Trade Mark Regulation (European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 on the European Union trade mark (codification) ("the EUTM Regulation")), The defendants (all of which are members of the IWG group of companies) counterclaimed for revocation of the claimant's marks for non-use is made under s.46 (1) (a) and (b) of the 1994 Act and arts 18 (1) and 58 (1) (a) of the EUTM Regulation.
(i) there must be the use of a sign by a third party within the relevant territory;
With regard to the 4th condition the Court of Justice of the European Union had held in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA  EUECJ C-291/,  CEC 283,  FSR 34,  ETMR 83,  ECR I-2799,  EUECJ C-291/00 that art 5 (1) (a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks OJ L 40, 11.2.1989, p. 1–7 "must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer". In Reed Executive plc and others v Reed Business Information Ltd and others  ETMR 56,  Info TLR 55,  EWCA Civ 159, (2004) 27(6) IPD 27058,  Masons CLR 29, , RPC 40, Lord Justice Jacob said at para  of his judgment In Reed that "there is no reason to suppose that the Court meant to soften the edges of 'strict identity' very far". He went on to point out at  that "[y]ou can only have 'identity' if there is both aural and visual identity". Applying the test laid down in LTJ v Sadas and Reed v Reed, EASYOFFICES was not identical to EASYOFFICE in Lord Justice Arnold's judgment. He emphasized at para  of his judgment in easyGroup that the test is not whether the sign is confusingly similar to the trade mark but whether the differences are likely to go unnoticed.
Lord Justice Arnold agreed with Mrs Justice Bacon that EASYOFFICE and EASYOFFICES are almost identical, but that was not enough. He also accepted that even exercising a moderately high level of attention, consumers may mistakenly write or say EASYOFFICES when they mean to write or say EASYOFFICE, and vice-versa, but, again, that was not enough. EASYOFFICES differs visually from EASYOFFICE in that it has an additional letter; it differs aurally in that it has an extra syllable; and it differs conceptually in that it is plural rather than singular. In his lordship's view, those differences would not go unnoticed by the average consumer.
In relation to the identity of services, the learned Lord Justice noted at  that there was a three-stage analysis to determine whether the defendants had used the sign EASYOFFICES in relation to services that were identical to those for which the trade marks had been registered. The first stage was to construe the specification of services for which the trade marks had been registered applying the principle set out by Lord Justice Arnold in Avnet v Isoact Ltd  FSR 16 at 19:
"… specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase."
The second stage was to ascertain precisely what the defendants did and continued to do under their sign. The third stage was to consider whether the defendants used the sign EASYOFFICES "in relation to" a service of "hire of temporary office space".
Lord Justice Arnold considered that many consumers seeking office space to hire would perceive EASYOFFICES as having some responsibility for the quality of the service provided by the suppliers of office space even if they appreciated that the suppliers were primarily responsible. It followed that the defendants had used the sign EASYOFFICES in relation to a service that was identical to one for which UK528A and EU509 had been registered. In finding otherwise the judge had fallen into error but in view of the lack of identity between the sign and the marks, that was insufficient for double identity infringement. His lordship concluded at  that the judge had been correct to hold that the defendants had not infringed the claimant's marks pursuant to s.10 (1) and art 9 (2) (a) though for "slightly different reasons."
(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.
The likelihood of confusion is determined 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."
He set out the following principles that he discerned from those cases at para :
"(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at  and .
(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: Ansul at ; Sunrider at ; Verein at ; Centrotherm at ; Leno at ; Ferrari at .
(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: Ansul at ; Sunrider at ; Verein at ; Silberquelle at ; Centrotherm at ; Leno at ; Gözze at , ; Ferrari at .
(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: Ansul at . Internal use by the proprietor does not suffice: Ansul at ; Verein at . Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at -. But use by a non-profit making association can constitute genuine use: Verein at -.
(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: Ansul at -; Verein at ; Silberquelle at ; Centrotherm at .
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including:
Ansul at  and ; La Mer at -; Sunrider at -, ; Centrotherm at -; Reber at , -; Leno at -, ; Ferrari at .
(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: Ansul at ; La Mer at ,  and ; Sunrider at ; Leno at .
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at ."
Referring to s.100 of the Trade Marks Act 1004 and the Court of Justice's decision in Ferrari between paras  and , Lord Justice Arnold said that the trade mark proprietor bears the burden of proving genuine use of a trade mark. Quoting para  of its judgment in Case T-78/19 Lidl Stiftung & Co KG v European Union Intellectual Property Office  EUECJ C-337/18_CO, ECLI:EU: C:2020:166, EU:C:2020:166 he said that the General Court had repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. Citing para  of Lidl the Court has also repeatedly held that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor to produce additional evidence to dispel any doubts as to the genuineness of its use. He noted that Daniel Alexander QC had said in Awareness Ltd v Plymouth City Council  RPC 24:
"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. …
22. … 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. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public."
Lord Justice Arnold said at  that the trial judge's assessment had been in part an exercise in primary fact-finding and in part a multi-factorial evaluation. In so far as it was an exercise in primary fact-finding, it could only be challenged if the judge's conclusion was rationally insupportable as Lord Justice Lewison had said at para  of Volpi and another v Volpi  EWCA Civ 464,  4 WLR 481. In so far as it was a multi-factorial evaluation, it could only be challenged on the grounds of errors of law or principle. easyGroup criticized Mrs Justice Bacon's judgment on a number of grounds between  and , None of those criticisms impressed his lordship,