Defining Advertising-Service Sub-Categories:
The “Printed-Publications” Test after easyGroup Ltd v Easy Live (Services) Ltd ([2025] EWCA Civ 946)

Introduction

The Court of Appeal’s decision in easyGroup Ltd v Easy Live (Services) Ltd stands at the intersection of trade-mark use, variant marks, partial revocation, and confusion analysis. It arose from easyGroup’s complaint that Easy Live Auction’s platform infringed two recently-acquired “easylife” registrations and from the defendants’ counter-attack seeking revocation of the older stylised mark for non-use. Arnold LJ (with Coulson LJ and Zacaroli LJ concurring) delivered a substantial judgment that:

• partly revoked easyGroup’s 2003 stylised mark, creating a new “printed-publications” test for carving out sub-categories of advertising services,
• overturned the High Court’s finding of no infringement in relation to the sign “EASY LIVE”, but otherwise upheld the dismissal of easyGroup’s wider infringement case, and
• harmonised the law on variant-mark use, inter-acting with the earlier easyfundraising judgment delivered the same day.

Because the Court faced conflicting first-instance outcomes and a cluster of post-Brexit “assimilated” EU authorities, the judgment is now a leading authority on:

1. When alterations to a registered logo do not “alter distinctive character” under s 46(2) Trade Marks Act 1994;
2. How courts should identify independent sub-categories of very broad service terms on partial revocation; and
3. How conceptual similarity (or difference) is to be assessed once the goods/services context is stripped away.

Summary of the Judgment

Arnold LJ allowed the appeal and the cross-appeal in part:

• Infringement: use of the bare sign “EASY LIVE” (but not “EASY LIVE AUCTION” or the company-name form) infringed both the stylised and word “easylife” marks under s 10(2)(b). Key was the court’s re-assessment of conceptual similarity once “live” could function as a verb.
• Variant-use defence: EasyGroup showed genuine use of acceptable variants (including forms that omitted the graphic “tick-triangle” and even the strapline), so the 2003 registration survived – but with a curtailed specification.
• Partial revocation: The broad term “advertising services; promotional services” was too wide. Following ACTC, Ferrari and the Supreme Court’s guidance in Sky v SkyKick, the Court crafted the tighter sub-category “providing advertising or promotional space in printed publications”.
• All other complaints and the bulk of the original High Court order were affirmed.

Analysis

1. Precedents Cited and their Influence

• Sony Computer Entertainment v OHIM (2015): confirmed that omitting low-distinctive figurative elements from a composite mark can still constitute genuine use. Heavily relied upon to validate EasyGroup’s “word-only” use of the stylised registration.
• Walton v Verweij Fashion (2018): Arnold J’s own two-stage test for variant-use (identify differences; ask if they alter distinctive character) framed the approach to the tick-triangle and strapline omissions.
• Merck v MSD (2017) & Sky v SkyKick (2024 UKSC): established the “fair specification” exercise for partial revocation. The Supreme Court’s recent emphasis on “purpose and intended use” led directly to the new printed-publications sub-category.
• ACTC (2020) & Ferrari (TESTAROSSA) (2020): EU authorities (now “assimilated”) clarifying that sub-categories must rest on purpose/intended use, not on price point or sales channel.
• Praktiker (2005) & Netto Marken-Discount (2014): continued relevance for what constitutes “retail services” and why concluding the sale oneself is not required.
• TVIS v Howserv (PETSURE/VETSURE) (2024 CA): warning against treating conceptual difference as a trump card unless “conceptual counteraction” genuinely applies. Used to correct the deputy judge’s reasoning.

2. Key Legal Reasoning

a) Variant Marks – tick-triangle, straplines & colours

Applying the Walton test, the Court held that the dominant element of the registration was the made-up word “easylife”. Because the tick device merely “reinforced the concept” and straplines were of “little trade-mark significance”, their variation or omission did not alter distinctive character (s 46(2)). Importantly, Arnold LJ rejected the submission that every non-negligible element must remain intact – a point that promotes branding flexibility for mark owners.

b) The “Printed-Publications” Test for Partial Revocation

The most novel ratio comes in how the Court sliced the broad heading “advertising services”. Guided by ACTC and Ferrari, the Court looked at purpose (to advertise third-party goods) and intended mode of use (the medium through which ads are delivered). Because EasyLife’s evidence covered only loose inserts in catalogues, and because an advertiser would reasonably think the same undertaking also offered ads on the surrounding catalogue pages, but not necessarily online or on TV, the Court defined a medium-specific sub-category:

“Providing advertising or promotional space in printed publications”

Everything else in class 35 was revoked. This formulation, also used the same day in easyfundraising, is likely to become the default approach when parties rely on print-only use to defend wide advertising specifications.

c) Conceptual Similarity and the Role of Context

The deputy High Court judge had treated “easylife” (a noun phrase) and “easy live” (adjective + noun) as “conceptually very different”. Arnold LJ corrected this for the bare sign “EASY LIVE”: outside the auction context, “live” is equally likely to be perceived as the verb “to live”, making the conceptual gap vanish. The judgment reiterates the rule from Equivalenza – conceptual comparison is performed without importing the goods/services context.

d) Re-balancing the Multifactorial Confusion Test

Once conceptual similarity was re-instated, the classic interdependency principle swung the outcome for the bare “EASY LIVE” sign: moderate-to-high mark similarity + identity of some services + enhanced distinctive character = likelihood of confusion, notwithstanding limited evidence of actual confusion.

3. Impact of the Judgment

• Service specifications: Brand owners can no longer assume that a single channel of advertising usage (e.g., print inserts) preserves an entire class 35 “advertising services” term. Expect more granular specifications at filing, and narrower “fair specifications” on revocation.
• Portfolio management: The Court’s generous view of variant use (even where only the core word element subsists) encourages pragmatic brand refreshes without fear of forfeiting legacy marks.
• Litigation strategy: Claimants cannot bank on conceptual distinctions shielding defendants, nor can defendants rely on a paucity of confusion evidence where the complained-of sign is only sparsely deployed.
• Harmonisation with EU law post-Brexit: The Court treats pre-2021 CJEU decisions (ACTC, Ferrari, Equivalenza) as assimilated, but does not shy away from adapting them to UK factual nuance – an early sign of principled divergence rather than wholesale departure.

Complex Concepts Simplified

Variant Form Use (s 46(2))

If you tweak your logo (colour tweaks, dropping a minor graphic, changing a strapline) you can still rely on that use to defend the registration, provided the core distinctive element – usually the key word – remains intact.

Partial Revocation

Trade marks are lost for goods/services where no genuine use is proven in five years. Courts may not revoke everything; instead they zoom-in on coherent “sub-categories” based on what was actually sold/offered.

Purpose & Intended Use Test

To decide if a narrower sub-category exists, courts examine why the customer uses the goods/services and how they use them. Different media in advertising (print vs online) can form distinct sub-categories; price or luxury status cannot, by themselves.

Conceptual Similarity

What mental idea does the mark evoke in a vacuum? You exclude the specific product context so that the same verbal element means the same thing across all classes.

Interdependency Principle

Lower similarity of goods can be offset by higher similarity of marks, and vice versa. Courts weigh all factors together in a “global appreciation”.

Conclusion

The Court of Appeal has delivered a judgment of real doctrinal weight. Its core legacy is the “printed-publications” sub-category – a workable, medium-based standard for narrowing broad advertising specifications when use is limited to physical media. Alongside this, the decision tightens the conceptual-similarity analysis, re-affirms the flexible approach to variant use, and stresses that limited confusion evidence does not immunise defendants where the infringing sign sees only spotty deployment.

Brand owners should audit legacy class 35 registrations for mismatch between specification breadth and provable use, especially if enforcement is contemplated. Defendants, on the other hand, must recognise that “easy” wins in confusion cases are unlikely where verbal overlaps blur consumer recollection, even in crowded lexical fields. Ultimately, easyGroup v Easy Live demonstrates that nuanced, service-specific reasoning – rather than blanket presumptions – will shape UK trade-mark litigation in the decade ahead.