easyGroup Ltd v easyfundraising Ltd & Ors

Factual and Procedural Background

This opinion concerns an appeal by the Plaintiff against an order made by Judge Fancourt on 21 November 2024, which dismissed various claims for trade mark infringement, passing off, and trade mark invalidity and revocation brought by the Plaintiff against the Defendants. The original judgment, delivered on 11 September 2024, addressed a complex set of claims involving nine different trade marks, but the Plaintiff has limited its appeal to infringement claims concerning four trade marks. The Defendants have filed a contingent cross-appeal challenging the partial revocation of one trade mark for non-use.

The Plaintiff is a holding company established in 2000 to own and license intellectual property rights related to various "easy" businesses. The First Defendant is a company operating a platform since 2005 that enables supporters to shop via linked retailers, with commissions shared between the Defendants and charities. The Second Defendant owns the First Defendant. The Defendants deny infringement and counterclaim for revocation of certain trade marks on grounds of non-use.

The appeal involves issues under the Trade Marks Act 1994, including infringement pursuant to section 10(2) and revocation for non-use under section 46. The court also considered relevant EU directives and regulations governing trade mark law. The case engages principles relating to the likelihood of confusion and the assessment of genuine use and variant forms of trade marks.

Legal Issues Presented

1. Whether the Defendants infringed the Plaintiff’s four specified trade marks under section 10(2) of the Trade Marks Act 1994 by use of various signs.
2. Whether certain variant forms used by the Plaintiff constituted permissible use of the registered Easylife Stylised Mark under section 46(2) or altered its distinctive character.
3. Whether the trade marks at issue should be partially revoked for non-use, including consideration of independent subcategories within broad classifications of goods or services.
4. The proper scope and application of the "use it or lose it" principle under section 46 relating to genuine use of trade marks.
5. The correct application of legal principles governing the assessment of likelihood of confusion, including the distinctiveness of marks and the perception of the average consumer.
6. Whether the Defendants’ counterclaims for revocation on grounds of non-use should be upheld.
7. Whether the judge erred in law or principle in his multi-factorial assessments, including the standard of review on appeal.

Arguments of the Parties

Plaintiff's Arguments

• The judge erred in concluding that variant signs used by the Plaintiff altered the distinctive character of the Easylife Stylised Mark; the word "easylife" plays an independent distinctive role in the variants.
• The judge wrongly required evidence of the reasons for use of variant forms rather than assessing the effect on distinctive character objectively.
• The judge took irrelevant evidence into account, including evidence about the importance of decorative elements that should not influence the perception of the average consumer.
• The judge failed to properly apply the criteria of purpose and intended use in determining whether subcategories within the broad classifications of services exist for partial revocation.
• The judge erred in holding no genuine use of the easy.com mark, wrongly characterizing its use as purely promotional.
• The judge erred in principle by considering actual use of services rather than the registered specifications in assessing infringement.
• The judge failed to properly consider the likelihood of confusion arising from the common use of the prefix "easy" in the Defendants’ signs.

Defendants' Arguments

• The judge correctly found that the variant signs altered the distinctive character of the Easylife Stylised Mark, supporting revocation.
• The judge properly applied the law on genuine use and non-use, including the assessment of variant forms and partial revocation.
• The Defendants’ use of signs did not cause a likelihood of confusion given the differences in services and the sophistication of the relevant consumers.
• The Defendants contended that the Plaintiff failed to prove genuine use of the easy.com mark due to lack of evidence on the number of active email accounts.
• The Defendants argued that the judge’s conclusions on infringement were correct and any errors were not material to the outcome.
• The Defendants opposed late amendment of the grounds of appeal concerning the variant signs on procedural fairness grounds.

Table of Precedents Cited

Court's Reasoning and Analysis

The court undertook a detailed multi-factorial analysis of the issues raised on appeal, applying established principles of trade mark law, including the likelihood of confusion test and the "use it or lose it" principle governing revocation for non-use.

In relation to the Easylife Stylised Mark, the court found that the judge’s original reasoning on the distinctive character of the mark was flawed. The judge had attributed significant distinctive character to decorative elements that were, by his own findings, non-distinctive or decorative. The court concluded that the compound word "easylife" provides almost all the distinctive character of the mark, with minimal contribution from other elements. Consequently, the court found that the variant signs used by the Plaintiff did not alter the distinctive character of the registered mark and should be considered permissible variants under section 46(2).

Regarding partial revocation, the court examined whether subcategories within broad service classifications could be identified based on purpose and intended use, as established by EU case law. It agreed with the judge’s conclusion that advertising services could be subdivided by medium (e.g., printed publications versus online advertising), and that retail services could also be differentiated by mode of provision (e.g., internet website versus on-board aircraft retailing). However, the court found that the judge had erred in applying the criteria but nonetheless reached the correct conclusions on the scope of partial revocation for the marks at issue.

On the easy.com mark, the court rejected the judge’s finding that use was purely promotional, holding that the provision of free email services constituted genuine use consistent with the commercial exploitation of the mark. Despite the absence of evidence on the number of active accounts, the court found the evidence sufficient to establish genuine use.

On infringement, the court upheld the judge’s findings that despite some similarities between the Defendants’ signs and the Plaintiff’s marks, there was no likelihood of confusion. The court emphasized that the average consumer would perceive the services and platforms as distinct, especially given the differences in service nature, presentation, and the sophistication of business users involved. The presence of the common element "easy" was insufficient to cause confusion given its widespread descriptive use and the differences in the overall marks and services.

The court also addressed procedural matters, granting permission for the Plaintiff to amend grounds of appeal late in the hearing given the lack of prejudice to the Defendants and the oversight in the original pleadings.

Holding and Implications

The court’s final decision was to allow certain grounds of the Plaintiff’s appeal in relation to revocation but to dismiss the appeal in relation to infringement claims.

Holding: The appeal is ALLOWED IN PART with respect to revocation of the Easylife Stylised Mark, the second easyJet mark, and the easy.com mark, including the recognition of permissible variant use and the appropriate scope of partial revocation. The appeal is DISMISSED with respect to all claims of trade mark infringement.

Implications: The decision confirms the importance of correctly assessing the distinctive character of trade marks and the objective effect of variant use in revocation proceedings. It clarifies the application of EU principles on identifying independent subcategories within broad service classifications for partial revocation. The ruling affirms that mere use of a common descriptive element ("easy") does not necessarily give rise to a likelihood of confusion where services and marks differ in significant respects, particularly for sophisticated consumers. No new precedent was set beyond the application of established principles, and the judgment primarily affects the parties by modifying the scope of the Plaintiff’s trade mark rights and dismissing infringement claims.