Defining Independent Sub-Categories of Services for Partial Revocation: The Precedent Set in easyGroup Ltd v easyfundraising Ltd ([2025] EWCA Civ 1000)

1. Introduction

In July 2025 the Court of Appeal handed down a significant judgment in easyGroup Ltd v easyfundraising Ltd & Ors. Although the dispute revolved around a familiar clash between easyGroup and another “easy-” branded business, the appellate court used the occasion to clarify two doctrinal areas that regularly trouble trade-mark practitioners:

When (and how) the specification of a registered trade mark should be partially revoked because genuine use is confined to only some services.
How to assess whether the use of variant forms alters the distinctive character of a registered mark.

The court allowed the appeal in part on the variant-use issue but, crucially, endorsed the chancery judge’s restriction of advertising services to “providing advertising or promotional space in printed publications”. By anchoring the analysis in the CJEU authorities ACTC (C-714/18) and Ferrari (C-720/18 & C-721/18), the Court of Appeal delivers the most explicit English guidance yet on how to delineate independent sub-categories of services. This commentary examines the case and its broader ramifications.

2. Summary of the Judgment

Variant Use (Easylife stylised mark): The appellate court reversed Fancourt J and held that five “tickball” and text variants did not alter the distinctive character of the registered mark—thus preserving the registration.
Partial Revocation (Easylife stylised mark): Despite upholding variant use, the court agreed that the Class 35 wording must be restricted to “providing advertising or promotional space in printed publications”.
Partial Revocation (easyJet mark): The judge’s limitation to “retail services provided to airline passengers” was overturned; a new wording—“retail services … provided by means of an internet website or on board an aircraft”—was substituted.
easy.com mark: Revocation for non-use set aside. Free @easy.com email addresses were held to constitute genuine use.
Infringement findings: All infringement claims failed; no likelihood of confusion was established for any of the four marks.

3. Analysis

3.1 Precedents Cited and Their Influence

ACTC GmbH v EUIPO (C-714/18) – Core authority confirming that purpose and intended use are the “essential criteria” for carving out independent sub-categories of goods/services.
Ferrari SpA v DU (C-720/18 & C-721/18) – Clarified that sub-category analysis must be concrete, consumer-facing, and avoid “abstract or artificial” atomisation.
Merck KGaA v MSD [2017] EWCA Civ 1834 – Domestic summary of the partial-revocation test, now read through the lens of ACTC/Ferrari.
Specsavers v Asda [2013] ETMR 46 & [2014] EWCA Civ 1294 – Key to both (i) variant-use tolerance and (ii) the “independent distinctive role” doctrine.
Silberquelle (C-495/07) – Authority on when promotional use is insufficient; distinguished in relation to easy.com email services.
easyGroup v Nuclei [2023] EWCA Civ 1247 – Cited for the eight-point genuine-use framework.

3.2 The Court’s Legal Reasoning

3.2.1 Variant Forms & Distinctive Character

“For the reasons the judge recognised in [155] and [157], the memorable part of the Easylife Stylised Mark is the compound word ‘easylife’. … None of the variants altered the distinctive character.” – Birss LJ (lead judgment)

Key points:

The court emphasised the objective nature of the test: why the proprietor chose a variant is irrelevant; only the consumer’s perception matters.
The strap-line and tick device were deemed decorative / descriptive, contributing minimally (if at all) to distinctiveness; the word element dominated.
Judicial consistency: Birss LJ cautioned against “trumping” coordinate-level decisions unless an error of law is shown—reinforcing collegiality between High Court judges.

3.2.2 Identifying Independent Sub-Categories in Service Mark Specifications

This portion forms the new precedent value. The court distilled the ACTC/Ferrari guidance as follows:

Start with the specification as registered; list the services literally used during the five-year period.
Ask whether the average consumer would naturally associate all services in the broad category with the mark, or only a discernible subset.
Purpose + Intended Mode of Use are decisive. For services, “intended mode of use” may map onto the medium by which they are delivered (e.g., printed matter, online, radio).
Distinct publics, price points, or market segments are not determinative (ACTC [53]).

Applying those steps:

Advertising Services – The average client would see printed-insert advertising as a different “mode” of service from online banner adverts. Consequently, a coherent sub-category—“advertising space in printed publications”—emerged.
Retail Services (easyJet) – The court rejected both “in-flight retail” and “airline passengers” labels; instead it recognised two modes: web-based retail and on-board retail.

3.2.3 Genuine Use and Promotional Activity

The Court refined the Silberquelle principle: a free service will not be dismissed as “mere promotion” if, objectively, it creates or maintains market share in its own right. The @easy.com email service satisfied that threshold.

3.3 Impact of the Judgment

3.3.1 On Trade-mark Portfolio Management

Brand owners can no longer assume that use in any advertising medium suffices to defend a broad “advertising services” registration. They must evidence use across distinct media or accept narrower, medium-specific protection.

3.3.2 On Enforcement Strategy

Likelihood-of-confusion analysis remains highly fact-sensitive; even where services are identical, low distinctiveness of the shared element (“easy”) can rebut confusion.
Evidence of actual confusion must be compelling; the Court treated anecdotal examples with caution.

3.3.3 On Registry and Litigation Practice

Expect a rise in:

Proactive specification trimming—prudent proprietors may file targeted applications (e.g., “online advertising services” specifically).
Medium-based arguments in both revocation and opposition actions under the UKIPO fast-track procedure.

4. Complex Concepts Simplified

Variant Use (s.46(2)): If you tweak a registered logo (change colours, add a strap-line etc.) it still counts as “use” provided those tweaks do not change what makes the mark memorable.
Partial Revocation: When you’ve registered “advertising services” but only ever sold space in paper leaflets, the register should reflect reality. The court can excise unused segments (e.g., online/radio advertising).
Purpose vs Intended Use: Purpose = Why consumers buy the service (e.g., to advertise). Intended Use/Mode = How that service is delivered (print, online, in-flight). Both must be considered to create fair sub-categories.
Likelihood of Confusion: A holistic test: compare marks/signs, goods/services, consumer attention, and marketplace context. “Mere association” is not enough.
Genuine Use: Real commercial exploitation aimed at preserving or creating market share. Token or purely promotional use will not do.

5. Conclusion

The Court of Appeal’s decision in easyGroup v easyfundraising carries weight beyond the immediate dispute. By rooting the partial-revocation test firmly in ACTC and Ferrari, the court provides a practical roadmap for dividing broad service specifications into defensible, consumer-facing sub-categories—often aligned with delivery media. It simultaneously tightens the variant-use doctrine, reminding practitioners that the consumer’s eye—not the brand owner’s intent—decides distinctiveness.

For rights-holders, the message is clear: audit your specifications, document use across each medium, and beware relying on a shared descriptive adjective to sustain infringement actions. For defendants, the judgment supplies a refined toolkit for challenging over-broad claims. Either way, the case is poised to influence UKIPO practice and High Court litigation for years to come.