Posted: 03/02/2023
This article was first published by LexisPSL on 19 January 2023 and can be found here (subscription required).
Easygroup Ltd (‘easyGroup’) has succeeded in establishing that certain use made by Easy Live (Services) Ltd and its directors (together ‘Easy Live’) of ‘easyLiveAuction.com’ signs took unfair advantage of easyGroup trade marks under section 10(3) of the Trade Marks Act 1994 (TMA 1994). However, this came at a cost, with Easy Live establishing that other ‘easyLiveAuction.com’ signs which it had used did not infringe, and partially revoking four of easyGroup’s trade marks. easyGroup further failed to establish a likelihood of confusion under TMA 1994, s 10(2) and, despite establishing both goodwill and misrepresentation, failed to succeed in its passing off claim.
Of interest will be Mr Justice Mann’s observations concerning how to assess infringement where first use falls outside of the limitation period, which contrasts with the position taken in a series of recent cases (paras [118]–[128]), as well as his affirmation of the requirements to prove use of EU (and UK comparable) marks which became vulnerable to revocation for non-use before IP Completion Day/Brexit (paras [41]–[45]). Mann J’s treatment of the limited evidence of use provided by easyGroup in addition to the distinction he made between advertising/promotional services directed towards licensees and wider consumers may further be of interest, while it was notable that the passing off claim failed solely on the basis of an insufficient likelihood of damage.
Easygroup Ltd v Easy Live (Services) Ltd and others [2022] EWHC 3327 (Ch)
Departing from recent decisions of Mrs Justice Bacon in Easygroup Ltd v Nuclei Ltd [2022] ETMR 31 which followed Mr Justice Arnold in Walton International v Verweij Fashion [2018] EWHC 1608 and Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), [2013] ETMR 31 at para [98], Mann J held that the assessment date for infringement is always the date of first use of the allegedly infringing sign (absent some change in use which requires a reassessment) (paras [118]–[128]).
While the limitation period is relevant to the timeframe for which remedies can be claimed (six years prior to the date of claim), if first use was before the limitation period, infringement must be assessed at that point.
Claimants/registrants could otherwise ‘move the goalposts’ by relying on enhanced reputation/distinctiveness of their marks built during the intervening period between a defendant’s first use and the beginning of a limitation period.
For this reason, claimants should ensure any evidence relied upon (in support of reputation or distinctiveness) aligns with the relevant first use dates of contested marks. Mann J further held that any limitation date applicable to an amended claim is the same as for the original claim in accordance with section 35 of the Limitation Act 1980 (LA 1980) (para [128]).
Easy Live speculatively argued that LA 1980, s 46(1) has been modified following Brexit such that easyGroup was required, counterintuitively, to prove use of its UK comparable easyProperty mark before IP Completion Day (31 December 2020) in the EU but not the UK. This was rejected by Mann J (paras [41]–[45]). The judgment reaffirms the current position regarding use of EU marks before Brexit, namely that use of an EUTM in the UK pre-IP Completion Day constitutes use of the UK comparable mark for the purposes of both trade mark maintenance and infringement.
Proving damage in passing off claims should not be assumed. While easyGroup was able to establish the first two elements of its passing off claim, a likelihood of damage was not established despite Easy Life’s ‘intention to forge an otherwise absent connection’, it being found to have ‘sought to create a link with the easyJet family in the mind of the average consumer’, and Mann J establishing (in respect of the reputation claim) that there would be a link between the sign and the mark in the mind of the average consumer. Despite this intention to indicate a relationship, Mann J found that the relevant public would not be diverted, easyGroup’s reputation was unlikely to suffer, and Easy Life’s use of signs without a licence did not give rise to damages as the ability of the easyGroup to charge others for a licence would not be diminished.
Easy Life’s decision to amend its sign so it more closely resembled those of easyGroup suggested an intention to create a link in the mind of relevant consumers, such that a ‘link’ was created for the purpose of TMA 1994, s 10(3), and further suggested that this use was made without due cause.
While not a determining factor, the decision reinforces how important the stylization of a mark can be when determining infringement, particularly in finely balanced cases. When clearing word marks for potential use, consideration should be given to how a particular stylization of that word mark can nevertheless increase the risk of infringement.
easyGroup is the owner of a family of ‘easy-’ prefix marks including but not limited to easyJet, easyGroup, easyMoney, easyProperty and Easy Networks.
Easy Live developed and marketed software and other services for auctioneering. Easy Live enabled members of the general public to bid on auctions held by third party auction houses through the Easy Live site. Easy Live further white labelled this software to auction houses and provided an integrated back-office function dealing with payment. The directors of Easy Live accepted that if Easy Live (Services) Ltd infringed they did likewise.
In October 2019, easyGroup Ltd brought proceedings against Easy Live in respect of its use of several logo devices for ‘Easy Live Auctions’. easyGroup relied on eight of its ‘easy-‘ trade mark registrations. Easy Live had amended its logo device over time with new signs introduced in 2010, 2013 and 2016 placing greater emphasis of the ‘easy’ element and using a font more similar to that used by easyGroup.
easyGroup issued proceedings on 8 October 2019 and claimed infringement of its registered trade marks, based on both likelihood of confusion and reputation, and passing off.
Easy Live counterclaimed to partially revoke, on the basis of non-use, the relevant protected services covered by easyGroup’s trade marks. It subsequently amended its counterclaim to apply to revoke easyGroup’s Easy Networks mark which had not been registered for five years at the date of the original counterclaim (in 2019).
Mann J dealt first with the defendant’s counterclaims for non-use, which concerned four of the eight registrations relied upon by easyGroup (easyGroup, easyMoney, easyProperty and Easy Networks). Mann J held that use made in the UK by easyGroup of its EU marks before IP Completion Day would be supportive of a finding of genuine use of the subsequent comparable marks.
easyGroup’s registrations were partially revoked for all of the contested services upon which easyGroup’s infringement claim relied, with the exception of ‘Data communications services’ for the Easy Networks mark. Insofar as there was any evidence of use for the provision of advertising or promotional services, this was provided to licensees only and insufficient to support the broader advertising and promotional services which easyGroup’s marks covered and which it sought to rely upon.
Concerning infringement, Mann J first addressed the relevant date for assessment and limitation which was disputed by the parties. He broke with recent jurisprudence to find that the date for assessment was the first use of each of the allegedly infringing sign, and that this was not impacted by the limitation date.
On likelihood of confusion, Mann J considered the similarity between easyGroup’s marks and the defendant’s signs to be moderate (at best), due to the common presence of the word ‘EASY’. However, Mann J held there to be no similarity between Easy Live’s activities and the goods/services left remaining following the partial revocation of the easyGroup marks. Confusion was not assessed in light of this determination.
easyGroup also claimed for infringement under TMA 1994, s 10(3), which was established in relation to the easyJet and easyMoney registrations. Key to this determination, in particular the finding of unfair advantage, was Mann J’s observation that Easy Life had intentionally altered their 2010, 2013 and 2016 logos to increase the similarity with easyGroup’s branding (para [195]).
easyGroup further claimed for passing off. Although it successfully established goodwill and misrepresentation, Mann J considered there was insufficient evidence of the likelihood of damage. easyGroup claimed its ability to charge licence fees would be diminished in consequence of the defendant’s actions, but this was not accepted.
easyGroup’s claim for revocation of the defendant’s registered trade mark was set aside for separate consideration.
Case details:
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