Last year, we reported on Mrs Justice Bacon’s decision in a case concerning trade marks for EASYOFFICE (Why did easyGroup lose the EASYOFFICE case?) in which she revoked the four trade marks that easyGroup relied upon for non-use and found that use of EASYOFFICE and EASYOFFICES by the defendants (Nuclei) did not infringe any easyGroup rights.
The Court of Appeal has now upheld those findings in full, though for slightly different reasons (easyGroup Ltd v Nuclei Ltd & Ors).
No infringement of EASYOFFICE
In a judgment with which the other two judges agreed, Lord Justice Arnold said there was no “double identity” infringement under section 10(1) of the 1994 Trade Marks Act. Although he concluded (unlike the first instance judge) that Nuclei had used the sign EASYOFFICES in relation to an identical service to two of easyGroup’s marks. Arnold LJ noted that the mark and the sign were different:
“EASYOFFICES differs visually from EASYOFFICE in that it has an additional letter; it differs aurally in that it has an extra syllable; and it differs conceptually in that it is plural rather than singular. In my view these differences would not go unnoticed by the average consumer.”
He also said that the Bacon J’s finding of no likelihood of confusion under section 10(2) of the Act was one that was open to her. Moreover, she made no error in finding that it was a case of “honest concurrent use”. Arnold LJ said:
“She treated honest concurrent use ‘as something to take into account as part of the global assessment of confusion’. The judge did treat honest concurrent use as a factor that only became relevant if there was a likelihood of confusion, but she was correct to do so.”
Lack of genuine use
Finally, Arnold LJ said that the judge was entitled to find that easyGroup had failed to prove genuine use of any of the trade marks during the relevant period, and to revoke them. In particular, he said, she had not applied a de minimis test to its use in relation to premises in Croydon, and she was entitled to attach little weight to advertising on the easyOffice website, as easyGroup did not adduce evidence of site visits or page views.
Rather than penalising it for the previous success of easyOffice, as easyGroup claimed, the judge had taken into account “the fact that easyGroup is an experienced operator which should be well able to prove genuine use of its trade marks, and she was right to do so.”
What does this mean?
This was a complicated case involving many issues that developed over two decades. The Court of Appeal judgment is a thorough analysis of the law on issues such as likelihood of confusion and honest concurrent use, and builds on its judgment in the Muzmatch case (first instance judgment discussed here).
With the number of registered trade marks continuing to increase, conflicts are increasingly common. This judgment provides a very useful guide to the boundaries of protection for both trade mark proprietors and third parties. In particular, it makes it clear that businesses with established brands are expected to be able to substantiate their claims. As always, comprehensive and clear record-keeping are essential.
If you would like more information on the practical implications of the judgment, please contact us.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com