Trade Marks - easyGroup Ltd v Premier Inn Hotels Ltd

Premier Inn at Salford

Author Peter McDermott  Licence CC BY-SA 2.0  Source Wikimedia Commons

 

Jane Lambert

Chancery Division (Lance Ashworth KC) easyGroup Ltd v Premier Inn Hotels Ltd [2025] EWHC 2229 (Ch) (29 Aug 2025)

This was a claim for trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994 and a counterclaim for two of the claimant's marks to be declared invalid under s.47 of the Act.  The action and counterclaim came before Mr Lance Ashworth KC sitting as a deputy judge of the High Court.  The learned deputy judge tried the action between 1 and 8 April 20'25.   The defendant did not press its counterclaim at first instance in view of the Court of Appeal's judgment in Comic Enterprises Limited v. Twentieth Century Fox Film Corporation [2016] EWCA Civ 455, but reserved the right to do so on appeal.  Mr Ashworth delivered his judgment in easyGroup Ltd v Premier Inn Hotels Ltd [2025] EWHC 2229 (Ch) on 29 Aug 2025.   In para [245] of his judgment, the deputy judge dismissed the claim and made no ruling on the counterclaim.

The Parties

The claimant in these proceedings was easyGroup Ltd, the registered proprietor of trade marks for several businesses that include the word "easy", the best known of which is the airline easyJet.  The defendant was Premier Inn Hotels Ltd., a nationwide hotel chain whose branding includes an anthropomorphic moon and star device on a purple background together with the words "Premier Inn" and "Rest easy" in stylized handwriting script.

easyGroup's Marks

On 5 Sept 2023, easyGroup was the registered proprietor of the following UK trade marks: 

• “EASYHOTEL” and “easyHotel" which were registered for “temporary accommodation; providing hotel accommodation; reservation services for hotel accommodation; computerised hotel reservation services” in class 42 under trade mark number 2246286B; and
• the stylized word "easy" in white against an orange background and in orange against white which was registered for “temporary accommodation; provision of holiday accommodation; hotel services; hotel reservation services” in class 43 under trade mark number 3362833.

On 24 Jan 2024, easyGroup acquired the word mark REST EASY APARTMENTS, which was registered for "accommodation bureau services [apartments]; Letting of apartments; Management of apartments; Rental of apartments” in class 36 under trade mark number 3515715.

The Claim

Premier Inn is the registered proprietor of the following mark for “Services for providing food and drink; temporary accommodation services; hotels; motels; café, bar and restaurant services; hotel reservations and booking services; rental of meeting rooms; rental of temporary accommodation; self-service restaurants; snack bars” in class 43 under trade mark number 3601725:

easyGroup objected to the use of that mark on the grounds that it infringed trade mark numbers 2246286B and 3362833 under s.10 (3) and sought its invalidation under s.47 (2).  Premier Inn had also marketed and delivered its services under the following signs:

The claimant alleged that such use also infringed its marks under s.10 (3).  Finally, easyGroup contended that the use of the words REST EASY in relation to Premier Inn's services infringed the REST EASY APARTMENTS mark under s.10 (2).

Claim for Infringement under s.10 (2)

Mr Ashworth addressed the claim for infringement of the REST EASY APARTMENTS mark under s.10 (2) of the Act first.  The subsection provides that:

"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."

After referring to para [174] of Lord Justice Arnold's judgment in easyGroup Limited v Nuclei Ltd [2023] EWCA Civ 1247; [2024] FSR 9, the deputy judge directed himself at para [40] that six conditions must be satisfied to establish infringement under section 10 (2):

" (i) there must be use of a sign by a third party within the UK; 

(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."

He noted at [41] that there was no issue as to conditions (i) and (iii). The disputed conditions were (ii), (iv), (v) and (vi).

Condition (ii) - The use must be in the Course of Trade
Premier Inn admitted that the words "Rest easy" when used with the name "Premier Inn" were a badge of origin, but argued that their use otherwise than in that locked-in form was a phrase in ordinary English conversation.  easyJet showed Mr Ashworth examples of the use of those words in Premier Inn's advertising other than in conjunction with the name "Premier Inn."  Premier Inn presented the deputy judge with examples of the words' use during the last 225 years. The deputy judge concluded that the phrase was a normal English idiom. Where it was simply being used in marketing copy and not as part of the lock-up with the Premier Inn Rest easy device or the Premier Inn Rest easy trade mark, it was not being used in a trade mark sense. It followed that the simple use of the words alone in marketing copy did not satisfy condition (ii).

Condition (iv) -  The Sign must be at least Similar to the Trade Mark

On assessing the similarity of mark and sign, Mr Ashworth referred to para [387] of Mrs Joanna Smith's judgment in Thom Browne Inc and another v Adidas AC and others [2024] EWHC 2990 (Ch) (22 Nov 2024) which her ladyship mistakenly attributed to Lord Justice Floyd in JW Spear & Sons v Zynga [2015] EWCA Civ 290, [2015] FSR 19:

"(i) The court should assess the phonetic, visual and conceptual similarity of mark and sign and decide whether, overall, mark and sign would be perceived as having any similarity by the average consumer.
(ii) If no overall similarity at all would be perceived, the court would be justified in declining to go on and consider the likelihood of confusion applying the global appreciation test, as art.9 (1) (b) [s.10 (2)] is conditional on the existence of some similarity. Such situations are not likely to occur often in contested litigation, but where they do occur, it is not legitimate to take account of any enhanced reputation or recognition of the mark.
(iii) Where the average consumer would perceive some overall similarity, however faint, the court must go on to conduct the global appreciation test for the likelihood of confusion, taking account where appropriate of any enhanced reputation or recognition of the mark.
(iv) In conducting the global appreciation test the court must take forward its assessment of the degree of similarity perceived by the average consumer between mark and sign."

The deputy judge directed himself that his task was to compare the REST EASY APARTMENTS trade mark with the signs used by Premier Inn. In view of his findings on condition (ii), he did not need to consider the use of the words “Rest easy” alone.  The comparison was between easyGroup's above-mentioned trade mark and the defendant's "Premier Inn Rest easy" sign and "Premier Inn Rest easy" trade mark.  Mr Ashworth concluded that the degree of similarity between that mark and those signs was low.

Condition (v) -  The Goods or Services must be at least similar to those for which the Trade Mark is registered

As to condition (v) similarity of goods and services, and the interpretation of goods and services specifications, the learned deputy judge cited extensively from Lord Justice Arnold's judgment in Extreme Networks Ltd v Extreme E Ltd [2024] EWCA Civ 1386 in para [43] of his own judgment:

"[11] Article 39 (7) of Directive 2015/2436 and Article 33 (7) of Regulation 2017/1001 both provide:

'Goods and services shall not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification.

Although Article 39 (7) of Directive 2015/2436 has not been specifically implemented in the 1994 Act, the principle it codifies is equally applicable under the 1994 Act.

[12]. In Canon, the CJEU stated at [23]:

'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.'

The CJEU has repeated this in numerous subsequent judgments: see, for example, Case C-416/04 P The Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-4237 at [85] and Case C-16/06 P Les Éditions Albert René SARL v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2008] ECR I-10053 at [65].

[13] As Advocate General Jacobs explained in his Opinion in Canon at [45], the UK Government submitted that the following factors should be taken into account in assessing the similarity of goods or services:

'(a) the uses of the respective goods or services;
(b) the users of the respective goods or services;
(c) the physical nature of the goods or acts of service;
(d) the trade channels through which the goods or services reach the market;
(e) in the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f) the extent to which the respective goods or services are in competition with each other; that inquiry may take into account how those in trade classify goods, for instance, whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.'

[14.] As the Advocate General explained in footnote 17 of his Opinion, this list of factors was taken from British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 ("TREAT") at 296-297 (Jacob J).
…
[20] In Sky plc v SkyKick UK Ltd [2020] EWHC 990 (Ch), [2020] RPC 16 I considered a number of authorities on the interpretation of specifications of goods and services, and summarised the applicable principles at [56] as follows:

'(1) General terms are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services.
(2) In the case of services, the terms used should not be interpreted widely, but confined to the core of the possible meanings attributable to the terms.
(3) An unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers.
(4) A term which cannot be interpreted is to be disregarded.'

[21]. Sub-paragraph (2) of this summary is based on Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40. In that case Jacob LJ cited at [43] what he had said when sitting at first instance in Avnet Inc v Isoact Ltd [1998] FSR 16 at 19'."

Mr Ashworth directed himself as follows at para [83]:

"The use of the sign must be in relation to goods or services which are at least similar to those for which the trade mark is registered. In this context, it is the actual use of the sign that has to be compared with the specification of the trade mark."

He recalled that the REST EASY APARTMENTS trade mark had been registered for 

“accommodation bureau services [apartments]; Letting of apartments; Management of apartments; Rental of apartments.”

He noted that the services supplied under Premier Inn's signs were "hotel services provided by Premier Inn."  Premier Inn provided a direct booking service for its own hotels, but no separate reservation service for any others.   In the deputy judge's judgment, there was no similarity of services between “Management of Apartments” with the hotel services provided by Premier Inn. As to “Accommodation Bureau Services”, not interpreting this widely, but confining it to the core of the possible meanings attributable, this was a service of finding accommodation for its clients by whoever might provide such accommodation, as opposed to merely allowing online booking of its own accommodation. Finding accommodation for clients was not similar to the use which Premier Inn had been making of the sign. Nor were these complementary services. For the purposes of condition (v), the “Letting of apartments” and the “Rental of apartments” should be compared with the provision of hotel services by Premier Inn.

Mr Ashworth remarked that easyGroup had adduced very little evidence as to the factors identified in para [13] of Extreme Networks:

• As to the uses of the respective goods or services, he acknowledged some similarity between hotel and apartment letting services in that apartments can be let for overnight or short stays but also noted some differences in that hotels offer extras like food, staff and parking which apartments do not.
• With regard to users of the respective goods and services, the deputy judge rejected easyGroup's submission that users of its services were identical to those of Premier Inn but found a significant level of overlap.
• On the physical nature of the services, he noted that both easyGroup and Premier Inn offered temporary accommodation but there was no evidence that easyGroup provided such extras as food, staff and parking unlike Premier Inn.
• On  the trade channels through which the services reach the market, he observed that both companies' services could be booked online but that was true of many other services,
• Self-serve consumer items were not relevant in this context.
• Premier Inn acknowledged that there was some competition with easyGroup for overnight stays since price was an important issue. In his lordship's view, it was likely that at least some customers would consider both options before deciding where to book.

The deputy judge's conclusion after undertaking a global assessment of all of the above matters was that the average consumer would consider there was a medium level of similarity between the rental/letting of apartment services covered by the REST EASY APARTMENTS trade mark and what Premier Inn provided by way of hotel services under its signs.

 

Condition (vi) - Likelihood of Confusion on the Part of the Public

Having found some overall similarity, the deputy judge directed himself at para [90] of his judgment that he had to assess the likelihood of confusion.  He referred to paras [7] and [8] of Lord Justice Arnold's judgment in Morley’s (Fast Foods) Ltd v Nanthakumar and others [2025] EWCA Civ 186 which set out principles for determining the likelihood of confusion that are routinely applied by the Intellectual Property Office and the courts:

"[7]. The manner in which the requirement of a likelihood of confusion should be assessed is set out in a standardised summary of the applicable principles, expressed in terms referable to the registration context. The current version of this summary 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.
[8]. The same principles are applicable when considering infringement, but 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 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.'"

The learned deputy judge noted that a likelihood of confusion can arise in different ways and referred to Lord Justice Arnold's summary of the case law in Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA Civ 1207; [2021] E.C.C. 25:

"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; EU: C:1997:528; [1998] 1 CMLR 445; [1998] CEC 315; [1998] ETMR 1 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).
[13]. As James Mellor QC sitting as the Appointed Person pointed out in Cheeky Italian Ltd v Sutaria (O /219/16) at [16], 'a finding of a likelihood of indirect confusion is not a consolation prize for those who fail to establish a likelihood of direct confusion'. Mr Mellor went on to say that, if there is no likelihood of direct confusion, 'one needs a reasonably special set of circumstances for a finding of a likelihood of indirect confusion'. I would prefer to say that there must be a proper basis for concluding that there is a likelihood of indirect confusion given that there is no likelihood of direct confusion.
[14]. 'Likelihood of confusion' usually refers to the situations described in para.[10] above. As this court held in Comic Enterprises, however, it also embraces situations where consumers believe that goods or services denoted by the trade mark come from the same undertaking as goods or services denoted by the sign or an economically-linked undertaking (sometimes referred to as 'wrong way round confusion')."

On the question of the need for evidence of actual confusion, the deputy judge pointed to para [39] of Lord Justice Arnold's judgment in Match Group LLP v. Muzmatch Ltd [2023] EWCA Civ 454; [2023] FSR 1.   His lordship had said that the absence of evidence of actual confusion is not necessarily fatal to a claim under s.10 (2), but the longer the use complained of goes on in parallel with use of the trade mark without such evidence emerging, the more significant it is. In considering the weight to be attached to this factor, it is relevant to consider what opportunity there has been for confusion to occur and what opportunity there has been for such confusion to have been detected.

Mr Ashworth set out to apply the principles that Lord Justice Arnold had identified in para [7] of his judgment in Morley’s (Fast Foods) Ltd v Nanthakumar and others. The deputy judge noted that it was common ground that he should determine the likelihood of confusion on the hypothetical basis that the average consumer was aware of the REST EASY APARTMENTS trade mark though she would not have sight of the mark and would be relying on her imperfect recollection of it. She would know that the mark was in relation to the rental of apartments, but would not have heard of “Rest Easy” as previously having anything to do with Premier Inn. She would know Premier Inn as an hotel company. What she would be doing was considering the actual use of the sign complained of in the context in which it was used while having an imperfect recollection of the REST EASY APARTMENTS trade nark.  She would perceive the mark as a whole and the sign as a whole but would not proceed to analyse their respective details.  In doing so, the average consumer would take into account the very low level of distinctiveness of the REST EASY APARTMENTS trade mark, the low level of similarity between the mark and sign and the medium level of similarity between the rental/letting of apartment services covered by the REST EASY APARTMENTS trade mark and the hotel services provided by Premier Inn under the Signs.

In the deputy judge's judgment, after undertaking the multifactorial assessment that would have to be done, the average consumer would not think that there was a likelihood of confusion. It followed that easyGroup’s claim under s.10 (2) failed.

Claim for Infringement under s.10 (3)

S.10 (3) of the Trade Marks Act 1994 provides as follows:

"A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services, a sign which—
(a)    is identical with or similar to the trade mark, 
(b)    . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

Mr Ashworth referred to para [13] of Lord Justice Arnold's judgment in Lidl Great Britain Limited, Lidl Stiftung & Co KG v Tesco Stores Limited Tesco Plc [2024] EWCA Civ 262; [2024] E.T.M.R. 25 that the following requirements have to be satisfied for a claim under this provision to succeed: 

"(i)    the registered trade mark must have a reputation in the relevant territory; 

(ii)     there must be use of a sign by a third party in the relevant territory; 

(iii)    the use must be in the course of trade; 

(iv)     it must be without the consent of the proprietor; 

(v)      it must be of a sign which is identical with or similar to the trade mark; 

(vi)    it must be in relation to goods or services; 

(vii)    it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii)   it must give rise to one of three types of injury, that is to say, 

    (a)    detriment to the distinctive character of the trade mark, 

    (b)    detriment to the repute of the trade mark, or 

    (c)    unfair advantage being taken of the distinctive character or repute of the trade mark; and 

(ix)    it must be without due cause."

The deputy judge noted that there were no issues as to conditions (ii) and (v).

Condition (1) -  The Registered Trade Mark must have a Reputation in the Relevant Territory
As to the first requirement, Mr Ashworth was referred to Mr Justice Fanourt's judgment in Sazerac Brands LLC v Liverpool Gin Distillery Ltd [2020] EWHC 2424 (Ch); [2020] ETMR 62:

"[33]. Establishing a reputation for the purposes of article 9 (2) (c) [s.10 (3)] is not a particularly onerous requirement, as has often been stated, but it must nevertheless be proved on the basis of some evidence. The enhanced protection afforded by art. 9 (2) (c) in a case where the offending sign is used on dissimilar goods or services depends on a sufficient reputation having been established through use. Reputation here is used in the sense of knowledge of the goods, not their repute among those who do know them. The general principles that apply are those set out by the CJEU in (Case C-375/97) General Motors Corporation v Yplon SA [2000] RPC 572 :

'… It cannot be denied that, in the context of a uniform interpretation of Community law, a knowledge threshold requirement emerges from a comparison of all the language versions of the Directive.

[23]. Such a requirement is also indicated by the general scheme and purpose of the Directive. In so far as Article 5 (2) of the Directive, unlike Article 5 (1), protects trade marks registered for non-similar products or services, its first condition implies a certain degree of knowledge of the earlier trade mark among the public. It is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trademark, may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the earlier trade mark may consequently be damaged.
[24]. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.
[25]. It cannot be inferred from either the letter or the spirit of 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.
[28]. Territorially, the condition is fulfilled when, in the terms of Article 5 (2) of the Directive, the trade mark has a reputation 'in the Member State'. In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have a reputation 'throughout' the territory of the Member State. It is sufficient for it to exist in a substantial part of it.'

[34]. The relevant public which must have some knowledge of the earlier trade mark is therefore that concerned by it. That must mean the part of the public that has had contact with or exposure to the goods or services on which the owner of the mark has used it. The extent of the public that must have some knowledge of the trade mark therefore depends on the product or service marketed by its owner. But not all of that sub-set of the public needs to have knowledge: it suffices that a significant part of the public concerned has knowledge."

Premier Inn admitted that the "easyHotel" mark had a reputation for hotel accommodation but not for  "temporary accommodation; reservation services for hotel accommodation; computerised hotel reservation services”.   Premier Inn did not admit that the "easy" mark had a reputation for “temporary accommodation; provision of holiday accommodation; hotel services; hotel reservation services”.  

easyGroup tried to argue that both "easyHotel" and "easy" had a reputation for “no frills, low cost and quality services in travel, specifically hotels”, but as “travel” was not one of the services for which either mark had been registered, the deputy judge was unable to see the relevance of any reputation in “travel”. The reputation that had to be established was in relation to the specified services of the marks in suit. If, for example, the average consumer would understand that the "easy" mark had a reputation in travel, but not in hotels, it would not assist easyGroup in its s.10 (3) claim.

easyGroup produced reports and accounts which showed a substantial and increasing turnover for its hotel business.  The deputy judge accepted that the evidence established a reputation for "hotels" and "temporary accommodation" but not for "reservation services for hotel accommodation; computerised hotel reservation services."  Mr Ashworth noted at [188]:

"easyGroup has not adduced evidence that the other members of the easy Travel Family have reputations or enhanced distinctiveness in the services for which the easyHotel UKTM and easy UKTM are registered. I have dealt with easyJet above. easyCar is a car rental operation, not a company providing hotel accommodation etc. By 2020 easyBus, which had started out operating low-cost airport transfers to and from city centres, was selling low cost bus seats on many hundreds of routes all over Europe and beyond. Again, this was not providing hotel accommodation etc."

He added in the next paragraph:

"Given the lack of reputation or enhanced distinctiveness in the relevant services, in my judgment, association with these brands cannot confer on the easyHotel UKTM or the easy UKTM the reputation and enhanced distinctiveness in the relevant services which is necessary for a claim under s.10 (3). If it were otherwise, there would be no magic in limiting this to the easy Travel Family. It would logically apply to all of the 'easy' brands as they all claim to offer low-cost, no frills service. To hold that a trade mark could obtain reputation and enhanced distinctiveness in particular services because of an association with trade marks sharing some similarity, but registered for and/or trading in different services would be to extend the protection given by trade marks well beyond the protection provided for under statute."

Gathering all the strands together,  the deputy judge concluded that the average consumer would find the "easyHotel" mark had a reputation and moderate enhanced distinctiveness for some of the services for which it was registered, such as "hotel accommodation and temporary accommodation", but not all.   The "easy" mark had no reputation or enhanced distinctiveness in respect of “temporary accommodation; provision of holiday accommodation; hotel services; hotel reservation services”.   As the "easy" mark could not satisfy the first of the conditions set out in para [7] of Lidl, easyGroup's claim for infringement of that mark under s.10 (3) failed.

Condition (iii) - Use in the Course of Trade
The deputy judge had already ruled that the use of “Rest easy” locked in the "Premier Inn Rest easy" device had been used in the course of trade as a badge of origin, but the simple use of the words "Rest easy" in marketing copy had not. He found that this condition had been satisfied.

Condition (v) - Use of a Sign that is Identical with or Similar to the Trade Mark
Premier Inn accepted that there was some visual and aural similarity because the word “easy” appeared in both the marks and signs but there were very substantial differences in layout, colouring and lettering. The deputy judge held that there was a very low level of visual and aural similarity and no conceptual similarity. Despite the low level of similarity, the condition was satisfied.

Condition (vi) - The Use must be in Relation to Goods or Services

Mr Ashworth held that it could not be disputed that Premier Inn's signs were used in relation to goods or services.  It followed that this condition had been satisfied.

Condition (vii) - Link

The deputy judge noted at para [198] that easyGroup had to establish a link between the sign and the trade mark in the mind of the average consumer.  The similarity had to be of such a degree that the average consumer would make a connection between the trade mark and the sign, but the degree of similarity did not need to create a likelihood of confusion. It had to be assessed globally having regard to all of the circumstances of the case. The fact that for the average consumer the sign would call the mark to mind is tantamount to the existence of such a link. 

easyGroup adduced no evidence of a link made by a consumer. Neither did Premier Inn from 6 million items of customer feedback. easyGroup referred to internal correspondence by its own staff and Premier Inn's in which the possibility of an issue over Premier Inn's signage was discussed. It made submissions as to what an average consumer might call to mind when seeing the Premier Inn sign.

Mr Ashworth considered  the factors set out in para [73 (13)] of Mrs Justice Joanna Smith's judgment in Lidl Great Britain Ltd and another v Tesco Stores Ltd and another [2023] EWHC 873 (Ch) (19 April 2023) and concluded:

"......(i) there is only a very low level of similarity visually and aurally and no conceptual similarity; (ii) the goods or services, being hotel accommodation under the easyHotel UKTM and the easy UKTM are identical to that being marketed under the sign, and similar to the temporary accommodation under the easyHotel UKTM, but there is no similarity between the other services the marks are registered for; (iii) the easyHotel UKTM has a reputation, whereas the easy UKTM does not have any reputation; (iv) the easyHotel UKTM has moderate enhanced distinctiveness, whereas the easy UKTM does not have any; (v) there is no evidence of any likelihood of confusion on the part of the public - indeed easyGroup have abandoned any claim that there is a likelihood of confusion, in my judgment rightly so. There is no realistic possibility of anyone looking at Premier Inn’s signs being confused, even with only an imperfect recollection of the easyHotel UKTM or the easy UKTM."

After undertaking the necessary global assessment in light of the evidence put before him and not stripping the sign of its context, he held at [213] that the average consumer would not make a link between Premier Inn’s sign and the easyGroup's "easyHotel" or "easy" trade marks. Accordingly, easyGroup’s claim under s.10 (3) did not satisfy condition (vii) in respect of either of the marks and fell to be dismissed.

Condition (viii) - Detriment and Unfair Advantage

In view of his findings on condition (i) as to the "easy" mark and condition (vii) as to both marks, it was not strictly necessary for Mr Ashworth to consider condition (viii). He did so in case his findings on those issues proved to be wrong. easyGroup complained of detriment to the distinctive character of its trade marks and of unfair advantage being taken of their distinctive character or repute.

Condition (viii) (a) - Detriment to the Distinctive Character

As to condition (viii) (a), the deputy judge referred to para [73 (15) - (19] of Mrs Justice Joanna Smith's judgment in Lidl:

"[73 (15)] Detriment 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 of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so (PlanetArt at [31] referring to Comic Enterprises at [113] and the decision of the CJEU in Intel at [29]).

(16) Detriment will be established where there is 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 (Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211 at [107]). Detriment to the distinctive character of the mark is caused when its "ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark" (Intel at [76]).
(17) It is immaterial for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark (PlanetArt at [31] referring to Comic Enterprises at [115]).
(18) "A serious risk of detriment may be established by deduction, but any such deduction cannot be supposition and must instead be founded properly on all the circumstances of the case and the nature of the trade in issue" (PlanetArt at [31] referring to Comic Enterprises at [118]). Actual evidence of a change in the economic behaviour of consumers is often difficult to obtain. Moreover, where the distinctiveness of a mark is whittled away, the detrimental impact can, in some circumstances, be reflected just as much in the evasive action that a proprietor needs to take to re-establish distinctiveness. Where a rival creeps up on a brand, a proprietor is sometimes forced to edge away from the new-comer at some cost or devote resources to amplifying its brand message to avoid its distinctiveness being drowned out by the alleged infringer. Where the evidence, taken as a whole, shows that damage of that kind is sufficiently likely, it is a corollary of the statement of principle in Comic Enterprises that it is not invariably necessary for there to be actual evidence that consumers have changed their behaviour as a result of the adoption of the rival mark (PlanetArt at [32]).

19) Descriptiveness of the respective marks is the key element. A trader has less right to complain that its brand is being diluted if it has chosen a mark which is of limited distinctiveness in the first place. Nor can a trader complain that precisely because its brand is so vulnerable to loss of distinctiveness and swamping by a newcomer using it descriptively that this gives rise to a claim for dilution. Nonetheless, these propositions must have regard to the precise marks in issue and the extent to which they only consist of descriptive terms (PlanetArt at [34])."

easyGroup asserted that it had exclusivity in the hotels sector for the word “easy” and that this was a classic dilution case. It said that easyHotel paid significant sums to easyGroup to use the easy brand. If others were able to use “easy” for nothing, it would clearly diminish the value of its licence.  

The deputy judge rejected that argument for two reasons.   First, the licence fee was computed on easyHotel's turnover, which had continued to increase notwithstanding Premier Inn's "Rest easy" branding.  Secondly, easyHotel had no monopoly of the word "easy" in the hotel industry.  It might have been the only hotel to incorporate the adjective in its business name or branding, but others had used the word in their marketing.

The learned deputy judge referred to Case C-383/12 P, Environmental Manufacturing LLP v OHIM  ECLI:EU: C:2013:741, [2013] EUECJ C-383/12, EU: C:2013:741 in which the Court of Justice of the European Union had held that detriment or risk of detriment to the distinctive character of a mark cannot be established without adducing evidence that the condition had been met.  It did not necessarily have to be evidence of actual detriment or risk of detriment which is not always easy to obtain, but there must be a basis for detriment or the risk of detriment to be deduced.   However, such deductions may not be the result of mere suppositions.   They must be founded on analysis of the probabilities and taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case.

easyGroup did not adduce any evidence of a change in the economic behaviour of the average consumer of the services for which its marks were registered or any serious likelihood that such change would occur in the future.  Mr Ashworth observed that Mrs Justice Joanna Smith had held in Lidl that in circumstances where Tesco had launched its campaign well over 2 years before trial, it had not been sufficient for Lidl to contend that there was a serious likelihood of a change in the economic behaviour of the average consumer occurring in the future.   In this case, it was almost 4 years from the launch of the "Rest Easy" campaign by Premier Inn until the trial.

In contrast to Lidl, easyGroup had adduced no evidence that it or easyHotel Ltd. had undertaken a responsive advertising campaign or found it necessary to take evasive action in the form of a corrective advertising. The submissions made by easyGroup as to detriment were not, in the deputy judge's view, based on evidence, but were mere suppositions.   Accordingly, easyGroup had not established any detriment that satisfied the requirements of condition (viii) (a).

Condition (viii) (c) - Unfair Advantage

Mr Ashworth referred to Lord Justice Arnold's summary of the relevant principles in Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5:

“[46]. 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 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.
...

[48]. In the general assessment which the referring court will have to undertake in order to determine whether, in [the] circumstances [of the instant case], it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
[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.'

[47]. Accordingly, the Court held at [50] that the answer to the fifth question was that:

"Article 5 (2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
[48]. It is clear both from the wording of the relevant provisions and from the case law of the Court of Justice and General Court interpreting them, in particular L'Oréal v Bellure, 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 General Court and of the domestic courts and tribunals that the defendant's conduct is most likely to be regarded as unfair where the defendant intends to take advantage of the reputation of the trade mark. Nevertheless, in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [2014] FSR 39 I concluded at [80] that there was 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 of the trade mark amounts to unfair advantage even if it is not proved that the defendant subjectively intended to exploit that reputation. Counsel for Aldi did not challenge that conclusion. I must nevertheless return to this topic later in this judgment.”

The deputy judge also considered paras [104], [107] and [108] of Lord Justice Floyd's judgment in Argos Ltd. v. Argos Systems Inc [2018] EWCA Civ 2211; [2019] Bus LR 1728.  He stated that mere commercial or economic advantage is not enough to render an advantage unfair.  There must be an added factor of some kind that was sufficient to show a change in the economic behaviour of the infringers' customers to show that the use of a sign was unfair.

easyGroup submitted that this was a similar case to Lidl in that it was conveying not an image of luxury but an image of value. It argued that trading down was just as much riding on coattails as trading up. By adopting a sign that called to mind the "easyHotel" and "easy" trade marks, Premier Inn was able to convey associations of super-budget, no frills hotels without investing time and money in configuring its business actually to supply such an offering. easyGroup asserted that Premier Inn was thus able to attract customers it would not otherwise have reached, without actually making the investment, cutting its margins and passing on savings as a genuine no frills business might have done.  It also alleged that the “Rest Easy” rebrand had been “enormously successful”

According to the deputy judge, no evidence was put before him to support the assertion that Premier Inn had been able to attract customers they would not otherwise have reached or that the rebrand had been “enormously successful." He rejected any analogy with Thatcher's Cider, where Aldi was required to show that it would have achieved the same volume of sales without the use of its sign. Aldi had launched an entirely new product, which had achieved significant sales in a short time without any promotion. No evidence had been adduced that Premier Inn had increased its sales at all by reason of its rebrand or at all. It followed that easyGroup had not established that there had been a change in economic behaviour of Premier Inn’s consumers, such as to make any advantage unfair.

The deputy judge rejected easyJet's contentions that Premier Inn intended to benefit from a link with the "easyHotel" and "easy" trade marks because Premier Inn did not regard easyHotels as a competitor. He also dismissed the contention that Premier Inn had acted recklessly. In his judgment, undertaking the multifactorial assessment weighing the matters previously discussed, Premier Inn took no unfair advantage. Rather, it launched its own rebrand by way of fair competition. It followed that easyGroup had not established unfair advantage that satisfied the requirements of condition (viii)(c).  easyGroup's claim under s.10 (3) failed on this ground too.

Condition (ix) - Due Cause
In view of his findings on conditions (i), (vii) and (viii), Mr Ashworth did not have to rule on this issue.

Invalidity

Had the deputy judge decided the infringement claims differently, easyGroup would have sought a declaration that Premier Inn's trade mark number 3601725 was invalid.   His lordship noted that as the infringement claim had failed, so, too, did the invalidity claim.

Comment

This judgment may not make new law but it reviews exhaustively the case law on s.10 (2) and (3) of the Trade Marks Act 1994.   Anyone wishing to discuss this case may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.