easyGroup Ltd v Easy Live (Services) Ltd & Ors

Factual and Procedural Background

This appeal concerns a dispute between the Claimant, a holding company ("easyGroup") owning intellectual property rights relating to various "easy" branded businesses, and the Defendants, who operate an online auction platform under the name "Easy Live Auction" ("ELA"). The Claimant alleged that the Defendants' use of signs incorporating "easy" infringed its trade marks and amounted to passing off.

easyGroup owns multiple registered trade marks including EASYJET and EASYMONEY, and licenses these brands to various businesses. The Defendants, founded by two individuals who remain directors and shareholders, began using the name "Easy Live Auction" and various stylised versions of this sign since around 2010.

easyGroup commenced proceedings in 2019 alleging trade mark infringement and passing off based on the Defendants' use of four specific signs. The trial judge dismissed the passing off claim but found some trade mark infringements in relation to two of the signs. The Claimant appeals the dismissal of the passing off claim and certain aspects of the trade mark declarations.

Legal Issues Presented

1. Whether the Defendants' use of certain signs infringed easyGroup's trade marks under section 10(2) and 10(3) of the Trade Marks Act 1994 and corresponding EU provisions.
2. Whether the Defendants' use of the signs amounted to passing off by misrepresenting a connection with easyGroup's brands and causing damage.
3. The relevance and evidential weight of the Defendants' state of mind, particularly intention to deceive or "living dangerously," in both trade mark infringement and passing off claims.
4. The validity and scope of the declarations of non-infringement granted by the trial judge.

Arguments of the Parties

Appellant's Arguments

• The Defendants' use of Signs 2 and 3 intentionally linked their branding to easyGroup's "easy" family, amounting to passing off and trade mark infringement.
• The trial judge erred in concluding that easyGroup suffered no damage from the passing off misrepresentation; easyGroup claims loss of licensing fees and damage to its licensing business.
• The declarations of non-infringement granted were too broad and uncertain, permitting potential future infringing use.

Respondents' Arguments

• The Defendants denied any intention to deceive or to imitate easyGroup's branding deliberately, asserting denials of copying and intention to create association.
• They contended that no misrepresentation was made and challenged the finding on passing off.
• They argued that the loss of licensing fees did not complete a cause of action for passing off and that the declarations were appropriate.

Table of Precedents Cited

Court's Reasoning and Analysis

The court analysed the trade mark infringement claims under section 10(2) and 10(3) of the Trade Marks Act 1994. It upheld the trial judge’s finding that Signs 2 and 3 infringed certain trade marks by creating a link in the mind of the average consumer with easyGroup’s marks and taking unfair advantage of their reputation. Signs 1 and 4 were found not to infringe, and this was not appealed.

Regarding passing off, the court considered the three elements: goodwill, misrepresentation, and damage. It accepted easyGroup’s ownership of goodwill and the judge’s finding of misrepresentation by the Defendants’ deliberate adoption of Signs 2 and 3 to evoke easyGroup’s branding. The Defendants’ state of mind was relevant evidence supporting misrepresentation, although not determinative.

The court rejected the Defendants’ argument that the judge erred in finding intention to misrepresent when no such allegation was pleaded, noting that the pleadings and trial conduct provided adequate notice. It also found no inconsistency between a lack of dishonesty and an intention to misrepresent connection.

On damage, the trial judge had rejected easyGroup’s claim for loss of licensing fees, apparently on the basis that such damage was not claimable as a matter of law or on the facts. The court analysed relevant authorities and concluded that loss of licensing income is a recognized form of damage in passing off claims, especially where the claimant has an existing licensing business as here.

The court held that the trial judge should have found that easyGroup suffered damage from the misrepresentation, thereby establishing the passing off claim. It noted that the practical impact on remedies was uncertain but that the cause of action was made out.

Regarding the declarations of non-infringement, the court explained that although the Defendants did not counterclaim, the declarations were granted at easyGroup’s suggestion to address concerns about chilling effect of a broad injunction. The court found the declarations for Signs 1 and 4 appropriate but agreed with easyGroup that the wording relating to use of the signs in plain text and domain name was uncertain and should be limited to forms used before the trial’s conclusion to provide clarity.

Holding and Implications

The court ALLOWED THE APPEAL IN PART.

The key holding is that easyGroup’s claim for passing off succeeded because the Defendants’ use of Signs 2 and 3 involved a misrepresentation causing damage by depriving easyGroup of licensing income. The trade mark infringement findings as to Signs 2 and 3 were upheld, and the declarations of non-infringement were confirmed but required clarification to avoid uncertainty regarding permitted uses.

The direct effect is that easyGroup’s passing off claim is reinstated, potentially entitling it to remedies including damages or an account of profits. No new legal principles were established; rather, the court applied and clarified existing law on the evidential relevance of intention, the nature of damage in passing off, and appropriate scope of declarations of non-infringement.