EasyGroup given a hard time by English courts in trade mark infringement claims

Having first determined that the average consumer for the purposes of this case would likely be more attentive to trade mark issues than the general public (which would be relevant particularly in comparing advertising services directed at such consumers), the Court turned to EasyLive’s contention that the Easylife Stylised Mark ought to be revoked for lack of genuine use. 

Pursuant to section 46(2) TMA 1994, genuine use of a trade mark can include use in a 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 variation is also separately registered as a trade mark in its own right). The aim is to allow proprietors to adapt their marks in accordance with marketing and promotional requirements. 

EasyGroup contended that it had used five signs which qualified as variations under section 46(2), in respect of services which fell within the scope of the registration, but this was contested by EasyLive.

The Court referred to the judgment of Arnold J (as he then was) in Walton v Verweij Fashion [2018] EWHC 1608 (Ch), who had held that there were two parts to an inquiry in respect of section 46(2): (a) firstly, to identify the points of difference between the mark used and the mark as registered (using the normal approach to assessing similarity); and (b) to assess whether those differences alter the distinctive character of the mark as registered (see also BUDWEISER BUDBRAU [2002] EWCA Civ 1534). 

Further, the weaker the distinctive character of a trade mark, the easier it will be to alter it by adding a component which is in itself distinctive, and vice versa. Where a mark contains words and a figurative element, the word element which usually be more significant in terms of the distinctive character of the entire mark (6minutes Media Gmbh v EUIPO, T-521/21). 

In this case, the Court went through each of the following five signs and compared them against the Easylife Stylised Mark as registered: 

In respect of the figurative marks depicted at Signs 1, 2 and 3, the Court held that the dominant element of both the registered mark and those signs was the word “easylife”, which was used in the signs identically, from an aural perspective, and similarly from a visual perspective. The Court further held that the average consumer would be more likely to be influenced by the continued presence of a “tick” mark in the sign, rather than by a change in the geometric shape surrounding it (i.e. circle vs. triangle), its position or its colour (applying 6 minutes Media). It therefore found that the use of Signs 1, 2 and 3 would constitute genuine use of the registered mark. 

 

As for the two word marks, Signs 4 and 5, it was common ground that Sign 4 was the closest of all the signs to the registered mark, and the Court found that use of Sign 5 also constituted genuine use of the registered mark (despite the omission of the words “lifestyle solutions”) on the basis that the word “easylife” was the dominant element in both, and had distinctive character. 

Having that the five signs above were acceptable variants pursuant to section 46(2) TMA 1994, the Court turned to the assessment of whether use had been made in the services for which the Easylife Stylised Mark had been registered. 

 

In short, the assessment in respect of class 39 (transport) was postponed due to a lack of clarity in the pleadings, but for the more relevant services in class 35 (advertising and promotional services), the evidence showed that there were third parties who had sought (through an intermediary) to
place advertising inserts in Easylife’s catalogues, that Easylife had
provided the space for such inserts in its catalogues and had invoiced
the intermediary accordingly, and that the intermediary. Most of the invoices featured Sign 2 (and sometimes Sign 1) in a very prominent position; and Sign 5 (the word mark) was consequently also used.

However, Easylive argued that the service for which the mark was used (inserts in catalogues) would be seen by the average consumer as a discrete sub-category and capable of being treated independently of “advertising and promotion services”, and sought partial revocation of the registration accordingly. 

 

The Court disagreed. Applying Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834, the Court noted that what was important was the purpose for which the services were provided. Here, whilst it was possible to describe the service provided by Easylife in narrower terms than those of the registration, the purpose of the service was the same as that provided for under the registration – i.e. providing customers with a means of advertising their goods or services.

Having found that most salient parts of Easylife Stylised Mark’s registration would not be revoked, the Court moved on to the allegations of infringement, focusing on the assessment of: (a) similarity; and (b) likelihood of confusion. 

Interestingly, and despite the fact that the difference between EASYLIFE and EASYLIVE is only one letter, the Court found that the average consumer would see the mark and the signs as having “at best, a moderate level of similarity“, on the basis that the word “easy” is a simple descriptive word that is frequently used both by itself and in combination with other words to form a brand. Further, the Court considered that “easylive” is conceptually very different to “easylife”. “Easylive” was said to be “adjectival in nature. It needs something more and it begs the question – an easy live what?“

The Court also found that the fact that Easylive’s signs did not contain anything resembling the “tick” device in the Easylife Stylised Mark was an important difference that the average consumer would notice. 

 

 

As for the services for which the Easylife Stylised Mark was registered, these were found to be identical or highly similar to the services offered by EasyLive.

 

Coming to likelihood of confusion, the Court found that whilst there is a moderate similarity between the relevant marks, the average consumer (whether a member of the general public or a customer looking to advertise their goods) would have been well aware that the similarity arose from the use of a word (“easy”) that was a normal word, a word that is widely used and which is capable of being used descriptively, but that was given some level of distinctiveness in the mark by being used in combination with other words and devices. Whilst the average consumer may well be aware of extensive use made of the word “easy” by EasyGroup, the Court did not consider that that that person would assume that EasyGroup had a monopoly of such use.

Even the fact that the Easylife Stylised Mark was found to have an enhanced distinctive character, did not mean that the average consumer was any more likely to be confused, given the descriptive (and common) nature of the word “easy” and the conceptual differences referred to above. 

 

The claim for infringement therefore failed. 

In this Kat’s opinion, trade mark practitioners may have been left a little perplexed with the finding that the marks “easylife” and “easylive” are only similar, at best, to a moderate degree. It may be that courts have become concerned with the EasyGroup’s propensity for trade mark litigation (even going as far as suing Netflix over their show “Easy”), and the prospect of this leading to an effective monopoly in a common word such as “easy” [see also the Court’s decision only last week in EasyGroup v Easyfundraising Limited [2024] EWHC 2023 (Ch), which again found that there was no trade mark infringement or passing off].

 

Given that brands such as “easyHotel”, “easyTravel”, “easyInsure” and “easyMoney” all fall within the EasyGroup portfolio, it does not seem that much a stretch to think that “easylive” might do so as well, albeit lacking the signature orange colour and capitalisation. 

Certainly these two recent “easy” decisions appear to show an intention by the judiciary to raise the bar for brands featuring common words, even in cases where enhanced distinctive character is proven.