Factual and Procedural Background
This opinion concerns a complex trade mark dispute between the Claimant ("W3") and the Defendant ("easyGroup") regarding alleged infringement of easyGroup's EU trade marks by W3's use of the sign "EasyRoommate" and its variants. The dispute involves issues of validity and revocability of trade marks, passing off, defences raised by W3, and threats made by easyGroup. It is agreed that a third party ("Mr Pons") is jointly liable for any infringement or passing off by W3.
The factual background spans over 22 years and involves extensive evidence about the businesses and brands operated by both parties, including a family of "easy-" prefixed brands controlled by easyGroup and the EasyRoommate business operated by W3 and its predecessors. The case also involves consideration of expert evidence in linguistics and foreign law, as well as detailed witness testimony from individuals associated with both parties and their businesses.
Procedurally, W3 commenced proceedings for groundless threats related to easyGroup's historic threats regarding the use of the EasyRoommate name. The parties exchanged extensive correspondence and engaged in negotiations and attempted sales of the EasyRoommate business, which were unsuccessful partly due to these threats. W3 also registered the EasyRoommate trade mark in the UK during the dispute.
Legal Issues Presented
- Whether W3 has infringed any valid EU trade mark of easyGroup by use of "EasyRoommate" and variants in the UK and eight other EU Member States.
- Whether easyGroup's EASY trade mark and other EU trade marks are valid or should be revoked on grounds including descriptiveness and non-use.
- Whether W3 is liable for passing off in relation to the EasyRoommate business.
- Whether easyGroup has made actionable groundless threats of trade mark infringement proceedings against W3.
- The extent and effect of statutory acquiescence and limitation defences raised by W3.
- Ownership and chain of title to the goodwill associated with the EasyRoommate business and its impact on validity challenges to easyGroup's trade marks.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| easyJet Airline Co Ltd v Dainty [2002] FSR 6 |
Success of combined brand actions by related companies and successor rights in intellectual property. |
Referenced to confirm easyGroup's status as successor in title to rights held by its licensees prior to brand consolidation. |
| Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [2015] FSR 22 |
Definition and assessment of the average consumer in trade mark cases. |
Used to define the average consumer standard applied in the present case. |
| London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729 |
Clarification of average consumer concept and attention levels. |
Applied to determine the level of attention of consumers in the relevant market. |
| Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-1541 (CJEU) |
Interpretation of Article 7(1)(c) regarding descriptiveness and distinctive character of trade marks. |
Guided the court’s analysis of whether the EASY trade mark was descriptive and/or had acquired distinctiveness. |
| Office for Harmonisation in the Internal Market v Wm Wrigley Jr Co [2003] ECR I-12447 (CJEU) |
Descriptiveness of trade marks and application of Article 7(1)(c). |
Supported the principle that a sign is excluded from registration if any of its meanings designate a characteristic of the goods or services. |
| Société des Produits Nestlé SA v Cadbury UK Ltd [2014] EWHC 16 (Ch), [2014] ETMR 17 |
Acquired distinctiveness through use and assessment criteria. |
Applied to assess whether EASY had acquired distinctive character through use. |
| Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2013] Bus LR 740 (CJEU) |
Interpretation of trade mark specifications and class headings. |
Used to interpret the scope of services covered by easyGroup's trade mark registrations. |
| Intesa Sanpaolo SpA v EUIPO [2017] (T-143/16) |
Definition of advertising services and use of trade marks. |
Distinguished from the present case to conclude easyGroup’s activities constituted advertising services. |
| Avnet Inc v Isoact Ltd [1998] FSR 16 |
Use of trade mark by internet service providers and advertising services. |
Distinguished as the present case involved direct advertising services. |
| Merck KGaA v Merck Sharp & Dohme Corp [2017] EWCA Civ 1834 |
Assessment of genuine use and specification scope. |
Applied to determine the relevant subcategories of services for genuine use. |
| London Taxi Corp v Frazer-Nash Research Ltd [2016] ETMR 18 |
Principles for genuine use of Community trade marks. |
Guided the court’s assessment of genuine use by easyGroup. |
| Specsavers International Healthcare Ltd v Asda Stores Ltd [2013] ETMR 46 (CJEU) |
Use of trade marks in differing forms and relevance of colours. |
Applied to assess use of marks in differing forms and colour significance. |
| J.W. Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290 |
Evidence required for likelihood of confusion and actual confusion. |
Referenced to evaluate the sufficiency of confusion evidence. |
| Miguel Torres v OHIM [2008] ECR II-3817 (T-287/06) |
Family of trade marks and likelihood of confusion. |
Applied to assess easyGroup’s family of marks argument. |
| Levi Strauss & Co v Casucci SpA [2006] ECR I-3703 (CJEU) |
Relevant date for assessment of trade mark infringement and statutory acquiescence. |
Guided the court’s determination of relevant dates and acquiescence principles. |
| Budejovick Budvar n rodn podnik v Anheuser-Busch Inc [2011] ECR I-8701 (CJEU) |
Interpretation of statutory acquiescence in trade mark law. |
Informed the court’s approach to acquiescence and the steps needed to interrupt the limitation period. |
| Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [2014] FSR 39 |
Unfair advantage in trade mark law without proof of subjective intention. |
Referenced to support the principle that unfair advantage can be found absent subjective intent. |
| Davidoff & Cie SA v Gofkid Ltd [2003] ECR I-389 (CJEU) |
Protection under Article 9(1)(c) for marks with reputation against use on dissimilar goods/services. |
Applied to define the scope of easyGroup’s unfair advantage and detriment claims. |
| Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537 (CJEU) |
Clarification of link, detriment and unfair advantage under Article 9(1)(c). |
Guided the court’s assessment of injury and link between signs and trade marks. |
| General Motors Corp v Yplon SA [1999] ECR I-5421 (CJEU) |
Definition of reputation for trade mark protection. |
Applied to assess easyGroup’s reputation in relevant territories. |
| Intel Corp Inc v CPM United Kingdom Ltd [2008] ECR I-8823 (CJEU) |
Detriment to distinctive character and link between marks. |
Applied to evaluate injury to easyGroup’s trade marks. |
| L'Oréal SA v Bellure NV [2009] ECR I-5185 (CJEU) |
Detriment to reputation and unfair advantage concepts. |
Used to assess easyGroup’s claims of tarnishment and free-riding. |
| Leidseplein Beheer BV v Red Bull GmbH [2014] Bus LR 280 (CJEU) |
Due cause defence in reputation-based infringement claims. |
Considered in relation to W3’s defence of prior use and good faith. |
| Pink v Sharwood (1913) 30 RPC 725 |
Abandonment of goodwill upon discontinuance of business. |
Referenced in assessing whether goodwill was abandoned by corporate entities. |
| Ultraframe (UK) Ltd v Fielding [2005] EWHC 1638 (Ch) |
Goodwill can be abandoned without intention if business discontinued. |
Applied to evaluate abandonment of goodwill by DMISL and DMISI. |
| Jennings v High Farms Corp 28 AD 2d 693 (2nd Dept. 1967) |
Reasonableness of time for winding up actions by dissolved corporations. |
Considered in relation to timing of assignment of goodwill by dissolved DMISI. |
| Best Buy Co Inc v Worldwide Sales Corp Espana SL [2011] EWCA Civ 618 |
Interpretation of threats in groundless threats claims under section 21. |
Applied to assess whether easyGroup’s letters contained actionable threats. |
| Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] 1 WLR 193 |
Passing off and relevant dates of assessment. |
Referenced to confirm passing off claims are assessed as at the date use commenced. |
Court's Reasoning and Analysis
The court undertook a detailed factual and legal analysis of the trade mark dispute. It carefully evaluated the evidence of witnesses, expert reports, and documentary material concerning the use, reputation, and distinctiveness of the "easy" family of trade marks owned by easyGroup and the use of the "EasyRoommate" signs by W3 and its predecessors.
The court found that the word "EASY" was descriptive of a characteristic of the services provided (advertising and temporary accommodation), and thus the EASY trade mark was invalid unless it had acquired distinctive character through use. The court concluded that easyGroup had not demonstrated that the EASY trade mark had acquired such distinctiveness in relation to the relevant services in the UK and Ireland, and therefore the EASY trade mark was invalidly registered for those services.
Regarding the alleged infringement claims under Article 9(1)(b), the court held that W3’s use of "EasyRoommate" and "easyroommate" did not infringe easyGroup’s EU trade marks in the UK or other EU Member States. It found that the signs differed sufficiently from easyGroup’s marks, that the "EASY" element was descriptive and not dominant, and that there was no likelihood of confusion, direct or indirect, despite some limited evidence of actual confusion or consumers making a link.
The court made a separate assessment of the Roof Logo used by W3 from June 2009, which was visually more similar to easyGroup’s marks and used a similar orange shade and font. Although the assessment was closer, the court concluded that easyGroup failed to establish a likelihood of confusion or infringement in relation to the Roof Logo as well.
On the issue of honest concurrent use, the court expressed doubt as to its availability as a defence under Article 9(1)(b), but did not need to decide the point given its findings on infringement.
For claims under Article 9(1)(c) concerning unfair advantage, detriment to reputation, or dilution, the court accepted that easyGroup had reputation in certain marks (notably EASYJET and easyHotel) but found no evidence that W3’s use caused detriment or took unfair advantage of that reputation as at the relevant dates.
The court addressed the infringement claims in relation to the European Equivalents of the marks and found no infringement there, noting the lack of linguistic or cultural evidence and the parties’ approach treating those claims as standing or falling with the UK claims.
Regarding statutory acquiescence, the court held that easyGroup’s detailed letters threatening proceedings in 2011 were sufficient to interrupt the five-year limitation period for acquiescence, preventing W3 from relying on that defence for the relevant period.
On limitation, the court held that W3 could not rely on limitation defences for acts outside the UK given the absence of pleaded and proved foreign limitation laws.
The passing off claim was dismissed as unlikely to add anything beyond the trade mark claims, with the relevant dates and principles being the same.
In relation to validity challenges to easyGroup’s EU trade marks other than EASY and EASYJET, W3’s “squeeze” challenge failed because the court found that W3 had not established ownership of sufficient goodwill at the relevant dates and that the trade marks were not infringed.
The court examined the chain of title and ownership of goodwill in the EasyRoommate business. It accepted evidence that a 2003 agreement transferred assets from DMISI to DMISL, but rejected that the 2006 Software Agreement transferred goodwill to W3. The 2015 Confirmatory Assignment was held to validly assign goodwill to W3, and the 2017 Confirmatory Assignment was accepted as valid despite DMISI’s earlier dissolution, as it related to winding up the corporation within a reasonable time.
W3’s UK trade mark was held valid but with a restricted specification of services, as conceded by W3.
On W3’s claim for groundless threats, the court found that the letters from easyGroup’s solicitors in 2011 and 2014 constituted threats of proceedings for trade mark infringement limited to use of the EasyRoommate sign and variants thereof, and did not extend unlawfully beyond what was permissible under section 21(1) of the Trade Marks Act 1994. Therefore, no actionable groundless threats were made. The court did not express a view on whether W3 was a person aggrieved by any such threats, as the issue did not arise.
W3’s claim for a declaration of groundless threats of passing off was not granted as it would not serve a useful purpose given the conclusions on infringement and threats.
Holding and Implications
The court’s final decisions are as follows:
- The EASY trade mark was and is invalidly registered in relation to advertising and temporary accommodation services.
- W3 has not infringed any of easyGroup's EU trade marks by use of the signs "EasyRoommate" and its variants in the UK or other relevant EU Member States.
- W3 is not liable for passing off in relation to the EasyRoommate business.
- W3's UK trade mark is valid but the specification must be restricted as conceded by W3.
- easyGroup has not made actionable groundless threats of trade mark infringement proceedings against W3.
The direct effect of this decision is that W3 may continue to use the EasyRoommate signs without liability for infringement or passing off in the UK and the other EU Member States concerned. The EASY trade mark held by easyGroup is declared invalid for the contested services, limiting easyGroup’s trade mark protection in this area. The court’s ruling does not establish new precedent beyond the application of existing EU trade mark law principles to the facts of this case.