Trade Marks - easyGroup v Jaybank Leisure

 

Jane Lambert

Intellectual Property Enterprise Court (HH Judge Hacon) easyGroup Ltd v Jaybank Leisure Ltd [2025] EWHC 3077 (IPEC) (21 Nov 2025)

This was a claim for trade mark infringement.   easyGroup was the registered proprietor of UK trade mark UK00002349891, an image of which appears above. The mark was registered for goods and services in several classes, including "[r]ental and hire of… motorised vehicles, non-motorised vehicles… and means of transport; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services provided on-line from a computer database or the Internet." easyGroup Ltd ("easyGroup") complained that Jaybank Leisure Ltd ("Jaybank") had infringed its trade mark by supplying vehicle rental and sales services under the EASIHIRE sign. Jaybank denied infringement and alleged non-use of the mark by easyGroup.  The action came on for trial before His Honour Judge Hacon on 9 and 10 Oct 2025. By para [120] of his judgment in easyGroup Ltd v Jaybank Leisure Ltd [2025] EWHC 3077 (IPEC), which he handed down on 21 Nov 2025, the judge dismissed the claim on the ground that Jaybank had a good defence under s.11A of the Trade Marks Act 1994.

Cause of Action

easyGroup contended that Jaybank had infringed s.10 (2) of the Trade Marks Act 1994.  The learned judge said at para [28] of his judgment that the law on infringement under s.10 (2) was well settled and had been summarized by Lord Briggs and Lord Stephens in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25, [2025] Bus LR 1391, [2025] WLR(D) 337, at para [23]:

"[23] In order to establish infringement under section 10 (2) (b) of the Act, six conditions must be satisfied: (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."

Identifying the Issue in Dispute

Judge Hacon said that conditions (i) to (v) were not in dispute.  Nor was the identity of the average consumer, who characterizes the public on whose behalf the likelihood of confusion is to be assessed. The parties agreed that he or she would be someone who was interested in hiring a vehicle, usually a motorized one.  The judge added that the court was in as good a position as any adult in the UK to view matters through the eyes of the relevant average consumer.  The only issue was the likelihood of confusion.

Meaning of the Phrase "Likelihood of Confusion"

At para [31], His Honour referred to para [37] of Lord Briggs and Lord Stephens's judgment in Iconix:

"In Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (Case C-39/97) [1999] ETMR 1; [1998] All ER (EC) 934, para 29, the CJEU explained what amounts to a likelihood of confusion in the following terms:

'… the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion….'"

Judge Hacon noted that Lord Justice Kitchin referred to the same passage in Canon in Specsavers International Healthcare Limited v Asda Stores Limited [2012] EWCA Civ 24, [2012] ETMR 17, [2012] FSR 19, at [52]. He said that the likelihood of confusion must be judged through the eyes of the average consumer.  He implied that the risk of the belief identified in Canon was a risk of such a belief on the part of the average consumer.

Assessing the Likelihood

Lord Briggs and Lord Stephens set out in the following paragraphs how a likelihood of confusion was to be assessed:

"[38] The manner in which the requirement of a likelihood of confusion in article 9 (2) (b) of Regulation 2017/1001 and article 10 (2) (b) of Directive 2015/2436 (see paras 13-14 above), and the corresponding provisions concerning relative grounds of objection to registration in Directive 2015/2436 and Regulation 2017/1001, should be interpreted and applied has been considered by the CJEU in a large number of decisions. In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version was set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097, para 27, as being:

'(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.'

[39] Having set out the standard summary of the principles in terms referable to the registration context, Arnold LJ went on to state, at para 28, that:

'The same principles are applicable when considering infringement, although it is necessary for this purpose to consider the actual use of the sign complained of in the context in which the sign has been used.'"

Relevant Date

Referring to paras [17] and [18] of the judgment in Case C-145/05 Levi Strauss & Co v Cassuci SpA EU:C:2006: 264, Judge Hacon said that the date on which the likelihood of confusion was to be assessed was the date on which the sign complained of was first used,

Context of Use

Judge Hacon considered paras [40] and [41] of the judgment of Lord Briggs and Lord Stephens in Iconix on the context in which a sign is used:

'[40] The context in which the sign has been used was considered by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19. Kitchin LJ, at para 87, stated:

'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.'
…
[41] The context in infringement proceedings under section 10 (2) (b) of the Act is 'limited to the circumstances characterising [the allegedly infringing] use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion': see O2 Holdings Ltd v Hutchison 3G UK Ltd (Case C-533/06) [2009] Bus LR 339, para 67."

Direct Evidence of Confusion

His Honour quoted para [77] of Lord Justice Arnold's judgment in  easyGroup Limited v Nuclei Limited [2023] EWCA Civ 1247 on the relevance of direct evidence in assessing the likelihood of confusion:

"As I discussed in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097; [2023] FSR 18 at [39], with the agreement of Nugee LJ and Lord Burnett of Maldon CJ, absence of evidence of actual confusion is not necessarily fatal to a claim under section 10 (2) / Article 9 (2) (b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, 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 any such confusion to have been detected."

Judge Hacon reflected at para [37] that although there may be an explanation for the lack of direct evidence of confusion other than that there was no significant risk of the average consumer's believing that the relevant goods or services come from the same undertaking or from economically-linked undertakings, real members of the public might hold such a belief but have no reason to think about it or to draw the belief to anyone's attention.

Colour

His Honour referred to para [96] of Lord Justice Kitchin's judgment in Specsavers International Healthcare Limited v Asda Stores Limited [2012] EWCA Civ 24 on colour:

"A mark registered in black and white is, as this court explained in Phones 4U [2007] RPC 5, registered in respect of all colours. … Further, the Court of Justice has said in many cases, for example Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] FSR 332, that the reputation of an earlier mark is to be taken into account when determining the likelihood of confusion. In particular, the more distinctive the earlier mark the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess in the market, enjoy broader protection than marks with a less distinctive character. Moreover, as the Court of Justice explained in SABEL BV v Puma AG (C-251/95) [1997] ECR I-6191; [1998] RPC 199, account must be taken of the visual, aural and conceptual similarity of the marks, including the overall impression given by them, and bearing in mind, in particular, their respective distinctive and dominant components. If, therefore, a logo registered in black and white has acquired, through use, a particular and distinctive character, in, for example, the colour green, that would seem to me to be a matter which ought to be taken into account in the global appreciation analysis. … In the case of a mark which has in fact been registered in black and white, its distinctiveness has been accepted in respect of every colour and the issue is … whether, through use, it has gained enhanced distinctiveness as a whole or in one or more of its components. I see no reason why those components should not include colour. Nor do I think this creates any practical problems because third parties must consider whether a mark has acquired enhanced distinctiveness through use in any event.'

Jaybank's Use of its Sign

Jaybank used its sign as follows:

The word appeared in several fonts, including stylized and italic.  Sometimes it was spelt in upper case characters, other times in lower case, and. occasionally, as "EasiHire" or "Easihire."

Comparison

There was no dispute that the services provided by Jaybank under its sign were identical or very similar to those for which the mark had been registered.  It was also agreed that the mark and sign were aurally identical.  Insofar as both sign and mark meant "hiring made easy", the judge found that they were conceptually identical.  Differences such as easyGroup's use of the Cooper black font and its emphasis on the upper case "H" were noted.  There was no evidence of actual confusion which His Honour found to be neutral.  He observed at [55] that there was no reason to suppose that any member of the public who assumed an economic connection between the two sources of the services would have given the matter much active thought and no reason to believe that it would have led to anything being said such as to generate evidence.  He rejected Jaybank's argument that the combination of the words "easy" and "hire" was essentially descriptive.  Subject to its defence under s.11A, he found that Jaybank had infringed easyGroup's trade mark.  

S.11A

S.11A provides as follows:

"11A.(1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46 (1) (a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought.
(2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought.
(3) If the defendant so requests, the proprietor of the trade mark must furnish proof –
(a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or
(b) that there are proper reasons for non-use.
(4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from "Provided that" to the end of subsection (3))."

The provision was inserted into the Trade Marks Act 1994 by reg 13 of The Trade Mark Regulations 2018 (SI 2018 No 825) to implement Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast) (OJ No. L 336, 23.12.2015, p.1).   

S.46 (1)

S.11A (1) refers to s.46 (1) and (3) of the Act:

"46 (1) 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;

.........................
(3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection 1(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made:

Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparation for the commencement or resumption began before the proprietor became aware that the application might be made."

Genuine Use

Judge Hacon considered  the following passages from Lord Justice Arnold's judgment in easyGroup Ltd v Nuclei Ltd [2023] EWCA Civ 1247, [2024] FSR 9:

"[106] Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second-hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark ...
(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark …
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin …
(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use …
(5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark …
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark …
(7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services …
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …
[107] The trade mark proprietor bears the burden of proving genuine use of its trade mark … The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned…"

His Honour concluded at [77] that Jaybank had a defence to the action for infringement if the trade mark was liable to be revoked as of 23 April 2024. He added that on the present facts, the mark would have been vulnerable to revocation unless easyGroup could show genuine licensed use before 23 Jan 2024 in relation to the services on which easyGroup relied.

Use Relied Upon

easyGroup relied on its use of the mark on websites with the addresses easyHire.mobi and eastHire.biz.  The learned judge was not satisfied that there had been genuine use on either of those websites.

Disposal

Judge Hacon concluded that Jaybank's use of the EASIHIRE sign would have infringed easyGroup's mark pursuant to s.10 (2) of the 1994 Act but Jaybank had a complete defence under s.11A.

Comment

This case contains a useful discussion on the matters to be taken into account when assessing the likelihood of confusion for the purposes of s.10 (2) of the 1994 Act.  It also considers s.11A and its interaction with s.46 (1).  Anyone wishing to discuss this case note may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form at any other time.