The Appeal - easyGroup Ltd v Easyfundraising Ltd

 

Jane Lambert

Court of Appeal (Lord Justices Coulson, Arnold and Zacaroli) easyGroup Ltd v Easyfundraising Ltd and others [2025] EWCA Civ 1000 (24 July 2025)

This note should be read in conjunction with Trade Marks and Passing off - easyGroup Ltd v Easyfundraising Ltd which I published on 23 Sep 2024 in NIPC Law.  In that note, I discussed Mr Justice Fancourt's judgment in easyGroup Ltd v Easyfundraising Ltd and others [2024] EWHC 2323 (Ch) (11 Sep 2024).  In the ante-penultimate paragraph, I noted that Mr Justice Fancourt's judgment had raised an issue over "variant forms" within the meaning of s.46 (2) of the Trade Marks Act 1994 that had to be resolved by the Court of Appeal. 

The Variant Forms Issue

I anticipated an appeal because the same issue had arisen in easyGroup Ltd v Easy Live (Services) Ltd and others [2024] EWHC 2282 (Ch) (4 Sept 2024), which I blogged in Trade Marks - easyGroup Ltd v Easy Live (Services) Ltd on 10 Sept 2024.   In that case, Mr Nicholas Caddick KC had reached the opposite conclusion to the one that Mr Justice Fancourt was to reach in easyGroup Ltd v Easyfundraising Ltd and others a few days later.  Mr Caddick's judgment was actually shown to Mr Justice Fancourt but he declined to follow it for the reasons he set out at para [175] of his judgment:

"I have naturally read carefully the Deputy Judge's reasoning for his conclusion to see whether I am persuaded that I should follow his decision, despite my own evaluative conclusion that the differences in the variants altered the distinctive character of the mark as registered. I am not persuaded that the word 'easylife' is the only distinctive element of the mark, or that the average consumer would detect the tick within the triangle motif in the registered mark and link it to the tickball motif. Even placing the forms side-by-side, which the average consumer does not have the ability to do, it is not an obvious connection. There was no evidence before me to support an argument that the aural characteristics of the mark and variants were of any real significance. For the reasons that I have given, I therefore decide that the distinctive character of the mark is varied by each of the variant forms."

Mr Caddick made an order implementing his judgment on 17 Sept 2024, while Mr Justice Fancourt made an order implementing his on 24 Nov 2024.  easyGroup Limited ("easyGroup") appealed against both orders.  The appeals came before Lord Justice Coulson, Lord Justice Arnold and Lord Justice Zacaroli on consecutive days and judgment in both appeals was delivered on 25 July 2025. 

The Trial 

In the action before Mr Justice Fancourt easyGroup sued Easyfundraising Ltd ("EFL"), The Support Group (UK) Ltd., Ian Woodroffe ("Mr Woodroffe") and Palatine Private Equity Ltd ("Palatine") for trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994, passing off and revocation or invalidation of two of EFL's trade marks.  There was also a counterclaim for revocation of four of easyGroup's marks for non-use under s.46 (1) (b) and the invalidity of two under s.47.  I introduced the parties and identified the claimant's marks and the defendants' allegedly infringing signs in my case note on Mr Justice Fancourt's judgment.  It is unnecessary for me to do it again.  I also discussed his lordship's judgment in some detail in the note.  Essentially, he dismissed easyGroup's claim and partly allowed the counterclaim.

Grounds of Appeal

easyGroup appealed on the following grounds:

• The judge erred in law or principle in holding that the variant signs relied upon by easyGroup altered the distinctive character of the Easylife Stylised Mark. 
• The judge was wrong to conclude that, if there had been a permissible variant use of the Easylife Stylised Mark, the specification should be partially revoked so as to restrict the Class 35 specification to "providing advertising and promotional space in printed publications" because that is not an independent sub-category of "advertising services; promotional services". 
• The judge was wrong partially to revoke the second easyJet mark so as to restrict "retail services connected with the sale of jewellery, watches, purses, wallets, pouches and handbags" to "retail services provided to airline passengers ..."
• The judge was wrong to hold that there had been no genuine use of the easy.com mark within the relevant period because he was wrong to regard the use made as purely promotional use. 
• The judge erred in principle when he held that there was no likelihood of confusion in relation to the Easylife Word Mark because he took into account irrelevant factors and failed to take into account relevant factors. 
• Infringement of the Easylife Stylised Mark must be considered on the footing that the specification falls to be partially revoked. 
• Infringement of the second easyJet mark must be re-assessed on the basis that the relevant part of the specification is amended to read "retail services connected with the sale of jewellery, watches, purses, wallets, pouches and handbags provided by means of an internet website or on board an aircraft"  
• The judge should have considered whether "easy.com" had been infringed. 
  

Respondent's Notice

The defendants contended that the judge's decisions should be affirmed on six additional or alternative grounds. I shall discuss those contentions in the context in which they arose.

The Judgment

The Court of Appeal delivered judgment in easyGroup Ltd v easyfundraising Ltd and others [2025] EWCA Civ 1000 (24 July 2025).  Lord Justice Arnold gave the lead judgment with which the other Lords Justices agreed.   The hearing was filmed and the parties' arguments can be followed on the Royal Courts of Justice Court 68 YouTube channel.

Ground 1 - Use of "Variant Forms"

S.46 (1) of the Trade Marks Act 1994 is as follows:

"The registration of a trade mark may be revoked on any of the following grounds -
(a)    that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b)    that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use

........................."

 

The defendants sought the revocation of trade mark number UK903367695 (which Mr Justice Fancourt had called the "first easylife mark" and Lord Justice Arnold "the Easylife Stylised Mark) under s.46 (1) (b) for non-use.   easyGroup admitted that it had never used the mark in the form in which it had been registered but contended that it had used it in "variant forms" in accordance with s.46 (2):

"For the purposes of subsection (1) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes."

Images of the forms on which easyGroup relied appear in my case note on Mr Justice Fancourt's judgment.

The judge considered those variants and concluded that they created a visually different overall impression from the mark.  In his view, the s.46 (2) exception did not apply. It followed that trade mark number UK903367695 should be revoked for non-use from a date to be determined at a subsequent hearing.

easyGroup alleged that the judge had made four errors:

• First, he erred in his evaluation of the distinctive character of the Easylife Stylised Mark (UK903367695)
• Secondly, he failed to consider the independent, distinctive role of the word "easylife" in the variants. 
• Thirdly, he wrongly required evidence of the reason for the use of a variant form instead of the mark as registered. 
• Fourthly, he took irrelevant evidence into account.

Lord Justice Arnold identified the real complaint as one of either a gap in the judge's logic or an inconsistency in his reasoning. The Lord Justice noted that in para [155] of his judgment, Mr Justice Fancourt had found the strapline to be descriptive, the tick device that replaced the title (the dot over the "i") to be decorative and the font to be unremarkable.  easyGroup submitted that the trial judge's findings must mean that those elements were non-distinctive.  Despite that, Mr Justice Fancourt concluded at para [156] that the distinctive character of UK903367695 lay partly in the word "easylife" and partly in the strapline and decorative elements. The basis for this conclusion was that "easylife" was "weakly distinctive", and that such greater distinctiveness as the mark had was attributable to its design elements. That could only be the case if those elements were distinctive which Mr Justice Fancourt had expressly disavowed. Lord Justice Arnold added that the trial judge had also accepted in [157] that the figurative elements would not be reproduced orally.

Lord Justice Arnold held that this criticism of the judge's reasoning was justified:

"For the reasons the judge recognised in [155] and [157], the memorable part of the Easylife Stylised Mark is the compound word "easylife". That word may not be particularly distinctive, but it is what gives the Easylife Stylised Mark almost all of its distinctive character. I would not go so far as to conclude that, even taken together, none of the other elements make any contribution to distinctive character at all, but their contribution is minimal."

easyGroup's second criticism of Mr Justice Fancourt's decision was that the word "easylife" had played an independent, distinctive role in each of the variants, and that his lordship had fallen into error by neglecting that.  Lord Justice Arnold agreed.  He observed that the following sign consisted of two elements, the "tickball" device and the words "easylife lifestyle solutions":

 

He noted that if the mark as registered were compared with the "easylife lifestyle solutions" element, then the differences in the variant would not alter the distinctive character of the mark as registered.

Lord Justice Arnold also agreed with easyGroup that Mr Justice Fancourt had been wrong to rely upon the absence of evidence from it as to the reasons why variants had been used instead of UK903367695 as registered. The question as to the effect of the variations on the distinctive character of the mark as registered was an objective one to be considered "through the eyes of the average consumer of the goods or services in question". Evidence from the trade mark proprietor as to its subjective reasons for using variants instead of the mark as registered would be inadmissible.

Finally, Lord Justice Arnold agreed with easyGroup that the trial judge had been wrong to rely on the subjective evidence of a witness of fact about the importance of the tickball device when the matter should have been considered through the eyes of the average consumer.

Since Mr Justice Fancourt's evaluation had been flawed, it was up to the Court of Appeal to reconsider the issue. At this point, I should mention that Lord Justice Arnold had directed himself as follows on the standard of review on appeal at para [62] of his judgment:

"Since the judge's decisions under appeal involved multi-factorial evaluations, this Court can only intervene if he erred in law or in principle, which includes a gap in logic, a lack of consistency or a failure to take into account a material factor that undermines the cogency of the conclusion: see Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, [2024] Bus LR 532 at [46]-[50] (Lord Briggs and Lord Kitchin) and Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 at [94]-[95] (Lord Briggs and Lord Stephens)."

In Lord Justice Arnold's judgment, none of the variants altered the distinctive character of UK903367695, in the case of Signs 1-3 for the reasons set out above and in the case of Sign 5 for the reasons given by Mr Caddick. 

The grounds of appeal as originally drafted did not include sign 1.  easyGroup did not spot that oversight until the start of the hearing.  The Court of Appeal permitted the claimant to amend its notice notwithstanding the defendants' objection.

easyGroup succeeded on the first ground.

Ground 2 - Partial Revocation of Trade Mark Number UK903367695

S.46 (5) of the Trade Marks Act 1994 provides that where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.  Had Mr Justice Fancourt reached a different conclusion on the revocation of trade mark number UK903367695 for non-use, he said that he would have amended that mark's specification to "providing advertising or promotional space in printed publications."  His lordship found evidence of use of the mark in relation to advertising and promotional services, but not in relation to "bringing together" for retail.

easyGroup contended that the judge would have been wrong to reach that conclusion had there been a permissible variant use of UK903367695.  "Providing advertising and promotional space in printed publications" was not an independent sub-category of "advertising services; promotional services".  However, the defendants supported his lordship's conclusion in ground 1 of their Respondents' Notice.

In Case C-714/18 P ACTC GmbH v European Union Intellectual Property Office [2020] EUECJ C-714/18P, [2020] ETMR 52, ECLI:EU: C:2020:573, EU: C:2020:573 and Joint Cases C-720/18 and C-721/18 Ferrari SpA v DU  EU: C:2020:854, [2020] EUECJ C-720/18, [2021] ETMR 9, [2021] Bus LR 106, ECLI:EU: C:2020:854, [2020] WLR(D) 585 the Court of Justice of the European Union held that the essential criteria which must be applied in determining whether a category of goods or services can be divided into independent subcategories are purpose and intended use. It is not sufficient that different goods may be aimed at different publics or sold in different shops or that different goods or services belong to different market segments.

easyGroup criticized the judge for failing to apply the criteria of purpose and intended use laid down in ACTC and Ferrari.   Lord Justice Arnold agreed that the judge had erred in that respect but had still arrived at the right conclusion.  He had recognized that the average consumer of advertising services might well assume that the undertaking that provided EFLs insert service was the same as, or economically linked to, an undertaking which provided the services of placing printed inserts into other printed publications, such as newspapers and magazines and of providing advertising space in such publications themselves. 

It was implicit in the judge's reasoning that the average consumer of advertising services would not make the same assumption in respect of advertising services in other media, such as online. Thus, it accorded with the principle that advertising services can be differentiated by medium, and hence intended mode of use, even though their purpose was the same.   Lord Justice Arnold had reservations about the clarity and precision of the judge's amended specification, but he decided not to change it. He therefore dismissed easyGroup's second ground of appeal.

Ground 3 - Partial Revocation of UK910584001

The defendants had sought the partial revocation of UK910584001 for "retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses, jewellery, watches, purses, purses, wallets, pouches and handbags, games" should be partially revoked because those items could only be bought by passengers on easyJet flights. Those goods could be ordered over the internet and paid for in advance, but they had to be collected on an aeroplane. 

Readers will recall that the same issue arose in easyGroup Ltd v Beauty Perfectionists Ltd and others [2024] EWHC 1441 (Ch) (13 June 2024), which I discussed in Trade Marks - easyGroup Ltd. v Beauty Perfectionists Ltd. and Others on 30 June 2024. In that case, Mrs Justice Bacon limited the specification to the provision of sales of those items on an aircraft. Mr Justice Fancourt allowed a slightly wider modification to "retail services provided to airline passengers connected with ..... [as per registered specification]". 

easyGroup contended that the restriction was wrong because the judge had failed to apply the criteria of purpose and intended use laid down in ACTC and Ferrari. In addition, the judge had erred in law because the Court of Justice had held in ACTC at [53] that "the fact that the goods were aimed at different publics" was not a relevant criterion for defining an independent subcategory of goods.  The defendants supported Mr Justice Fancourt's decision in their respondents' notice.  

Lord Justice Arnold agreed that the second error was one of law or principle, enabling the Court of Appeal to consider the issue. afresh.  The purpose of easyGroup's services was no different from that of any other retailer. It was to bring a selection of goods together, enabling consumers to make a choice. As for their intended mode of use, the only difference was that goods were delivered to consumers on aeroplanes rather than to their homes. As they would be used on the ground, that did not seem to him to be a relevant consideration. 

On the other hand, Lord Justice Arnold rejected easyGroup's contention that it was not possible to discern independent sub-categories within "retail services". It seemed to him that retail services could be differentiated by medium as was exemplified by the (b) part of the Class 35 specification of UK903367695.  

easyJet provided two sub-categories of retail services: 

(i) retail services provided by means of an internet website and 

(ii) retail services provided on board an aircraft. 

Although an aircraft was, from that perspective, merely a type of premises, it was such a unique type that it could be differentiated from other kinds of premises. Lord Justice Arnold did not think that the average consumer would think that retail services provided on board aircraft were provided by the same or economically-connected undertakings as retail services provided in a shop. By contrast, the average consumer might think that retail services provided by means of an airline's website were connected with retail services provided by another website, not least because the software involved was likely to be similar in its functioning.

Accordingly, Lord Justice Arnold allowed Ground 3 and dismissed the cross-appeal.  He substituted an order that the relevant part of the specification be amended to read "retail services connected with the sale of jewellery, watches, purses, wallets, pouches and handbags provided by means of an internet website or on board an aircraft".

Ground 4 - Revocation of easy.com

Mr Justice Fancourt had revoked UK2247942 in its entirety under s.46 (1) (b) of the Trade Marks Act 1994 because he could find no commercial use of the mark beyond providing email addresses and a website linking to other "easy" brand businesses.   The Court of Justice had held in Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] EUECJ C-495/7, [2009] EUECJ C-495/07, [2009] ETMR 28, [2009] Bus LR D45, [2009] ECR I-137 that there was no genuine use of a trade mark "where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter".  Mr Justice Fancourt had regarded such email accounts and the website as promotional. 

easyGroup contended that the trial judge had been wrong to hold that there had been no genuine use of the easy.com mark within the relevant period. He had erred in regarding easyGroup's use as purely promotional. 

 The defendants supported the judge's finding and argued in Ground 2 of their respondents' notice the additional ground that there was no evidence of active email accounts.

In Silberquelle, consumers were given a free drink bearing the trade mark whenever they bought an item of clothing. The purpose of the transaction was to promote clothing sales and not "to create or preserve an outlet for the goods or services that bear" the trade mark."  Lord Justice Arnold distinguished Silberquelle on the ground that the email services did create or preserve a share of the market for easyGroup in email services.   The fact that those services were gratuitous was irrelevant, as it was common ground that that would not prevent the use from being genuine.   For that reason, Lord Justice Arnold held that Mr Justice Fancourt had been wrong to revoke the easy.com mark in limine.

As for the respondents' notice, the trial judge had before him a witness statement proving more than de minimis use of the email service and website.   He had noted that evidence but had treated it as evidence of promotional use rather than genuine use.   Lord Justice Arnold concluded at [106] of his judgment:

"Thus the evidence establishes nearly 20 years' use, which extended into the relevant period (4 February 2017 to 3 February 2022). Furthermore, it was use on a sufficient scale to justify migrating users to a different address rather than simply closing the service down in June 2020. It is also relevant to note that Mr Anderson went on to say that from 2005 to 2017 there were almost 55 million pages views of the easy.com website and 10.7 million users. Furthermore, easyGroup relied upon documentary evidence that, between 1 January and 2 August 2017, the easy.com website had hundreds of thousands of users and several million page views. Although users of the website may not have been users of the email service, the website promoted the email service."

He therefore allowed the appeal on Ground 4 and dismissed Ground 2 of the respondents' notice.

Ground 5 - Infringement of UK3532904

easyGroup contended that the judge erred in principle when he held that there was no likelihood of confusion in relation to the "Easylife" word mark because he took into account irrelevant factors and failed to take into account relevant factors. 

The Defendants contended that, even if the judge had erred, he had reached the right conclusion.

easyGroup alleged that Mr Justice Fancourt had made the following errors:

• He based his comparison of retail services on what Easylife actually did, rather than on the services for which the Easylife Word Mark was registered. 
• He erred in relying on the absence of the distinctive orange and white livery used by most of easyGroup's licensees.
• He erred in relying on a lack of actual confusion in respect of advertising services.
• He failed to take into account the identity of services when assessing the likelihood of confusion

On the first point, Lord Justice Arnold accepted that the judge had erred, but his error had not been material.  The average consumer would appreciate that the fundamental characteristic of those services was that they provided a convenient way for supporters indirectly to give money to good causes. As the judge found, he or she would appreciate that the underlying services were provided by third parties. The judge accepted that there was some similarity with retail services and made no error of principle in finding that the similarity was at a fairly high level.          

As for the second clear, it was from para [247] of his judgment that the trial judge understood that this was "a simple word mark". The judge only addressed the orange and white livery at in the context of the "family of marks" argument raised by easyGroup. The same argument was not relied on for the claim of infringement of the Easylife word mark. 

At first sight, Mr Justice Fancourt appeared to err on the third point, but the context was the judge's consideration of the likelihood of indirect confusion. 

easyGroup's last point was just wrong.  The judge expressly took the identity of services into account when assessing the likelihood of confusion.

For all these reasons, Lord Justice Arnold dismissed Ground 5 and allowed Ground 3 of the cross-appeal in the respondents' notice. 

Ground 6 - Infringement of UK903367695

The trial judge had assumed for the purpose of the assessment, that the mark had not been revoked in its entirety but the specification had been amended. easyGroup contended that the judge's assessment of whether the stylized Easylife mark had been infringed was infected with the same errors as his assessment of whether the Easylife word mark had been infringed. That had been Ground 5 and as Lord Justice Arnold had dismissed the appeal on that ground, it followed that he should dismiss Ground 6 too.   As Ground 4 of the respondents' notice had supported Mr Justice Fancourt's reasoning, Lord Justice Arnold allowed that ground of the cross-appeal too. 

Ground 7 - Infringement of UK910584001

As the specification of  UK910584001 had been amended to "retail services connected with the sale of jewellery, watches, purses, wallets, pouches and handbags provided by means of an internet website or on board an aircraft", it followed that infringement had to be assessed on the amended specification. easyJet contended that the defendants' services were very similar, if not identical, to retail services.  Lord Justice Arnold agreed that might well be true for sales through websites, but not for sales on aircraft.  The fundamental difference, however, was that the average consumer would appreciate that the fundamental characteristic of those services is that they provide a convenient way for supporters indirectly to give money to good causes.   He therefore dismissed Ground 7 and allowed Ground 5 of the cross-appeal, which supported Mr Justice Fancourt's findings.

Ground 8 - Infringement of UK2247942

The question of whether or not easy.com had been infringed did not arise at trial because Mr Justice Fancourt had revoked the mark in its entirety.   As the Court of Appeal had reversed the revocation, it followed that their lordships should consider the issue de novo.  

easyGroup argued that the mark had been infringed for the following reasons:

"i) The distinctive and dominant element of the easy.com mark is the word "easy".
ii) That is the first part of each of the Defendants' signs complained of, save that in the case of the sign "@easyuk" the judge correctly held at [229] that the only distinctive element of that sign was the word "easy".
iii) The easy.com mark and the signs are similar. A factor in that similarity is that the "FUNDRAISING" and "SEARCH" elements of the signs allude to the services at issue, and so will have less significance in the average consumer's perception. The "@easyuk" sign is similar to a very high degree.
iv) The email services for which the easy.com mark are registered are at least similar to the Defendants' provision of email notification alerts, hosting of digital content and/or offering an online platform for creating online profiles. Consumers would be likely to believe they are types of services that a provider of email services would also provide. In particular, they overlap in their customers, trade channel (the internet) and purpose of use (the provision of online information or communication).
v) The average consumer of the Defendants' services and the services for which the easy.com mark are registered is a normal member of the public, and will pay a low to average level of attention to detail in selecting these free or low-cost and relatively commonplace services."

The defendants supported the trial judge in Ground 6 of the respondents' notice.  They argued that there was no likelihood of confusion for the following reasons:

"i) The distinctive and dominant component of the easy.com mark is the combination of the two elements. "Easy" is a common descriptive adjective in everyday use, while ".com" is generic. The combination of the two has the minimum distinctive character to be validly registered, but no more.
ii) The judge made no finding that the Defendants provided the services relied upon by easyGroup, and the allegation of infringement should be dismissed for that reason alone.
iii) In any event, the word "easy" is the only common element between the mark and the signs complained of. Since it is of low descriptiveness, that points against there being a likelihood of confusion.
iv) The fact that the word "easy" is used by a substantial number of unconnected undertakings provides further support for that confusion.
v) The average consumer would pay a normal level of attention, not a low to average one."

Except for the second (which was explained by the fact that Mr Justice Fancourt did not consider the possibility that easy.com had been infringed at all), Lord Justice Arnold found the defendants' arguments more persuasive than the claimant's.  He therefore dismissed Ground 8 and allowed Ground 6 of the respondents' notice.

Comment

Lord Justice Arnold remarked at para [129] that although the appeal succeeded in certain respects with respect to revocation, it failed in relation to infringement.  easyGroup was successful on the s.46 (2) point on which Mr Caddick and Mr Justice Fancourt had opposite views, and it rescued two of its registered marks from revocation.   Anybody wishing to discuss this case may call me on 020 7404 5252 during normal UK office hours or send me a message through my contact page at any time.