EasyGroup has recently lost two cases against other companies that use the word easy in their branding.
In a judgment on 4 September 2024, Deputy High Court Judge Nicholas Caddick KC found that Easy Live and Easy Live Auction did not infringe. The signs were used for auctioneering software and an online auctioneering platform.
In a separate judgment on 11 September 2024, Mr Justice Fancourt found no infringement or passing off by e-commerce company Easy Fundraising (EFL).
Easy Live case
EasyGroup brought this action based on its word and stylised UK trade marks for easylife/Easylife, which it acquired in 2022. It alleged infringement and also sought to invalidate the defendants’ EASY LIVE AUCTION and EASYLIVEAUCTION marks.
The judge found that there was no real likelihood of confusion under section 10(2) Trade Marks Act 1994 (TMA). He said that the average consumer would see the stylised mark and the signs “as having, at best, a moderate level of similarity”, explaining:
“the average consumer looking at the Defendants’ Signs would see that the word ‘easy’ is being combined with a different descriptive word (‘live’), to create ‘easylive’ which is conceptually very different to ‘easylife’. Conceptually, the mark ‘easylife’ stands by itself – a person can have an easy life. Nothing more needs to be said. In contrast, ‘easylive’ does not stand by itself but is adjectival in nature. It needs something more and it begs the question – an easy live what?”
That question was answered by the addition of the word “Auction” in three of the signs and the context of the use in other cases. There were also other differences between the mark and the signs, said the judge.
EasyGroup had provided 87 documented examples of what it claimed was actual confusion between the mark and the signs. However, the judge attributed most of these to mis-typing, rather than evidence of actual confusion. Only seven examples raised a possible suggestion of confusion, and these could be explained by errors or uncertainty rather than confusion.
Having rejected the infringement claim, he also rejected easyGroup’s claim to invalidate the defendants’ trade mark.
In a counterclaim, Easy Live sought to invalidate easyGroup’s marks. Deputy Judge Caddick found that the stylised easylife mark had not been used for certain services in class 35 and services in class 39. He said he would hear further submissions on whether to order partial revocation of the mark in respect of those services.
Easyfundraising case
This case was based on nine registered trade marks, including EASYJET, easy.com, easyMoney and easyGroup as well as easylife. The complex case involved a total of 13 claims and counterclaims for infringement, invalidity/revocation, passing off and liability.
The judge partly upheld the counterclaims for revocation of some of easyGroup’s marks for non-use though this raised an interesting issue which we discuss further below.
He concluded there was no likelihood of confusion under section 10(2) TMA. He found some degree of similarity between the marks and the signs, saying the word “easy” would not be perceived as “a dominant characteristic of the marks”, but said the services provided by EFL and those specified in the marks were not identical or similar:
“EFL does not provide licensing services or support to licensees. It provides advertising and promotional services to retailer clients. The fact that such clients may pay for advertising space on the easyfundraising platform, or on easysearch, does not mean that the advertiser is a licensee of goods and services, within the meaning of the specification. None of the other things that EFL does as part of its business amount to licensing of goods or services, or providing support to such licensees.”
He also found no likelihood of confusion under section 10(2) TMA in relation to the other signs used by the defendants, namely @easyuk, two easyfundraising signs and easysearch. None of eight alleged instances of actual confusion proved actual confusion by an average consumer.
Turning to section 10(3) TMA infringement, he found that no link would have been made between the signs and the trade marks (except for one of the easyfundraising signs). In any case, there was no damage to distinctiveness or repute and no unfair advantage.
Rejecting the passing off claim, he said: “I do not accept that any damage to the reputation of Easylife was caused by any association with easyfundraising, and no harm was done to the distinctiveness of Easylife’s brand by EFL’s business, which has been carried on successfully in parallel with Easylife since 2005.”
Different findings
The judges reached different conclusions on one point, concerning the revocation of the easylife mark. Deputy High Court Judge Caddick rejected this on the ground that the forms used by easyGroup were variants of the registered mark. But Fancourt J revoked the mark for non-use, saying the differences in the variants used altered the distinctive character of the mark as registered.
Having reviewed the Caddick judgment, Fancourt J said:
“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.”
What does this mean?
These and other recent decisions indicate that the courts take a sceptical view of easyGroup’s trade mark infringement claims. As we have seen in other disputes, the lack of convincing evidence of actual confusion supported by witness statements did not help its case.
Both judgments address a wide range of issues and will be particularly relevant for any brand owners that have a family of trade marks and/or use an everyday word in their branding. It may prove hard to enforce such marks against other companies that use the same word without evidence of actual confusion.
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