The Appeal - easyGroup Ltd v Easy Live (Services) Ltd.

 

Jane Lambert

Court of Appeal (Lords Justices Coulson, Arnold and Zacaroli) easyGroup Ltd v Easy Live (Services) Ltd and others [2025] EWCA Civ 946 (24 July 2025)

This was an appeal by easyGroup Ltd ("easyGroup") against the order of Mr Nicolas Caddick KC of 17 Sept 2024 dismissing that company's claims for trade mark infringement and a declaration of invalidity against Easy Live (Services) Ltd. ("ELS") for the reasons set out in his judgment in easyGroup Ltd v Easy Live (Services) Ltd and others [2024] EWHC 2282 (Ch) (4 Sept 2024).  There was also a cross-appeal against Mr Caddick's dismissal of ELS's counterclaim for revocation of one of the claimant's trade marks for non-use.  I discussed Mr Caddick's judgment in Trade Marks - easyGroup Ltd v Easy Live (Services) Ltd. on 10 Sept 2024.  

The Variant Forms Issue

One of Lord Justice Arnold's reasons for permitting both the appeal and cross-appeal was that Mr Caddick's conclusion on the meaning of the words "variant forms" in s.46 (2) of the Trade Marks Act 1994 was incompatible with that of Mr Justice Fancourt in easyGroup Ltd v Easyfundraising Ltd and others [2024] EWHC 2323 (Ch). easyGroup appealed against both orders. Both appeals were heard by Lords Justices Coulson, Arnold and Zacaroli and judgment in both cases was delivered on the same day. Lord Justice Arnold delivered the lead judgment with which the other Lords Justices concurred. I discussed the Court of Appeal's judgment in easyGroup Ltd v Easyfundraising Ltd and others [2025] EWCA Civ 1000 (24 July 2025) in The Appeal - easyGroup Ltd v Easyfundraising Ltd on 23 Sept 2025. A greater understanding of both cases can be obtained by reading that note in conjunction with this one.

The Trial

I introduced the parties, their respective marks, ELS's signs, easyGroup's claim and ELS's defence in  Trade Marks - easyGroup Ltd v Easy Live (Services) Ltd.  I explained that Mr Caddick considered ELS's counterclaim first because the revocation of UK903367695 ("the Easylife Stylised Mark") would have been a complete defence to the claim for infringement.   He held that the mark should not be revoked in its entirety for non-use pursuant to s.46 (1) (b) of the Trade Marks Act 1994 because it had been used in a "variant form" within the meaning of s.46 (2).  The deputy judge then turned to infringement of the Easylife Stylised Mark and UK3532904. (the Easylfe Word Mark") and found that there was no likelihood of confusion in the case of either of them.   He dismissed the counterclaim for a declaration of invalidity of the Easylife Word Mark and easyGroup's claim for invalidation of  UK3372957.

Grounds of Appeal

easyGroup appealed on the following grounds:

• The deputy judge had been wrong to find that the claimant's and the defendants’ signs were conceptually very different.
• He had been wrong in law to hold that the enhanced distinctive character of the Easylife Stylised Mark did not mean that the average consumer would be more likely to be confused.
• He had erred in his assessment of the likelihood of confusion.

The defendants served a respondents' notice contending that the judgment should be affirmed on further or alternative grounds.

Ground 1 - Whether the Easylife Marks and the Defendants’ Signs were conceptually very different

easyGroup submitted that Mr Caddick had erred in law or principle in finding that “easylife” and “easylive” were “conceptually very different” and that that error led him into a further error when assessing the likelihood of confusion.   According to easyGroup, Mr Caddick fell into error by taking into account the services in respect of which the defendants' signs had been used when assessing the conceptual similarity of a mark and the allegedly infringing sign.   The Court of Justice of the European Union had held in paras [70] to [73] of Case C-328/18 P European Union Intellectual Property Office v Equivalenza Manufactory SL EU: C:2020:156, [2020] EUECJ C-328/18P, ECLI: EU that the services for which a sign was used should not be taken into account when considering similarity between sign and mark.  The deputy judge had also erred in principle in failing to explain what the two concepts were and how they differed, as the Court of Appeal had required in TVIS Ltd v Howserv Services Ltd [2024] EWCA Civ 1103, [2025] ETMR 2 at [39].   Had the deputy judge not made these errors, easyGroup argued that he would not have made a finding of conceptual difference since the word “easy” was the same in both the marks and the signs, and the words “life” and “live” had related meanings. Rather, he should have found conceptual similarity.

Lord Justice Arnold agreed with easyGroup that its Easylife marks were conceptually similar to the defendants' EASY LIVE signs, particularly in the forms “easy live” and “Easy Live”.  Mr Caddick had erred in law by taking into account the services for which the defendants' signs had been used. However, he had not erred when considering the EASY LIVE AUCTION and SERVICES signs.

As Mr Caddick had erred with regard to the EASY LIVE signs, the Court of Appeal had to reassess the likelihood of confusion in relation to those signs de novo.  However, Lord Justice Arnold was not persuaded that the deputy judge had made the same error about his assessment of the likelihood of confusion of the claimant's marks and the defendants' other signs.

The defendants contended in their respondents' notice that Mr Caddick had erred in law or principle in holding that their services were identical or highly similar to those for which the Easylife marks had been registered. Lord Justice Arnold held that there was a moderate degree of similarity between the defendants’ advertising and catalogue services and “providing advertising or promotional space in printed publications” in that they were all forms of advertising, but differentiated by medium (online versus print). In the case of the defendants’ auction broadcast service, the similarity was low because it was not an advertising service.

The defendants argued that their services differed from “retail services” in that the defendants did not conclude any sales with customers bidding on their website. If the bidder was successful at auction, they would transact with the auction house or perhaps the vendor.  That argument was founded on the Court of Justice's judgment in C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2006] 3 CMLR 29, Case C-418/02, [2006] 2 WLR 195, [2005] EUECJ C-418/02, [2005] ECR I-5873, [2005] ETMR 88, [2005] EUECJ C-418/2, [2006] Ch 144.  Lord Justice Arnold rejected that contention for the reasons that he set out between paras [112] and [115] of his judgment.

Ground 2 -  Enhanced Distinctive Character of the Easylife Stylised Mark 

easyGroup alleged that Mr Caddick had erred in law by saying that the enhanced distinctive character of the Easylife Stylised Mark “does not mean that the average consumer was any more likely to be confused”.  It also alleged that he had repeated the error in relation to the Easylife word mark at [138].  It contended that the matter should have been judged through the eyes of the average consumer of the goods or services in question. Lord Justice Evans agreed that the deputy judge's sentence appeared to be erroneous at first, but it was clear from the context that Mr Caddick meant that the enhanced distinctive character was not sufficient to lead to any real likelihood of confusion, having regard to other relevant factors.  He did not, therefore, fall into error.

Ground 3 - Alleged Errors in Assessing the Likelihood of Confusion

easyGroup alleged that the deputy judge had made several errors in assessing the likelihood of confusion. One point which Lord Justice Arnold accepted was an apparent inconsistency between the deputy judge’s findings as to the significance of the similarities between the Easylife word mark and the defendants’ signs at para [137] of his judgment and his findings with respect to the Easylife Stylised Mark at para [85].

Reassessment of the Likelihood of Confusion

Because of Mr Caddick's error regarding the conceptual similarity of EASY LIVE to EASY LIFE and the inconsistency of his findings as to the stylised mark and the word mark, the Court of Appeal had to reassess the likelihood of confusion. Lord Justice Arnold concluded that there was a likelihood of confusion between EASY LIVE and the Easylife Stylised Mark at least with respect to the “bringing together” services.

Disposal

Lord Justice Arnold allowed both the appeal and the cross-appeal in part. He allowed the appeal to the extent of substituting a finding of infringement of both UK903367695 and UK3532904 by use of the sign EASY LIVE, but otherwise dismissed it. He allowed the cross-appeal to the extent of substituting “providing advertising or promotional space in printed publications” for “advertising services; promotional services” in the specification of the Easylife Stylised Mark, but otherwise dismissed it.

Comment

The meaning of "variant forms" in s.46 (2) of the Trade Marks Act 1994 was not an issue in this appeal, even though it was one of the reasons why permission to appeal was granted to easyGroup.  It was, of course, an issue in easyGroup Ltd v Easyfundraising Ltd and others, and it must have been debated in this appeal because Lord Justice Arnold acknowledged at para [2] of his judgment in Easyfundraising  the benefit of argument from "all four counsel."   Anyone wishing to discuss this case note may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page.