easyGroup Ltd v Premier Inn Hotels Ltd

Factual and Procedural Background

This summary describes the judgment of Judge Ashworth in a trade mark dispute between two commercial parties, anonymized here as Company A (the claimant) and Company B (the defendant). The dispute concerned multiple registered UK trade marks owned by Company A and various signs and devices used by Company B in connection with hotel and related services.

Key registrations and signs (anonymized):

• Company A Mark 1 (UKTM no. 2246286B; registered 21 September 2000): a series of two word marks registered in Class 42. The specification includes temporary accommodation; providing hotel accommodation; reservation services for hotel accommodation; computerised hotel reservation services.
• Company A Mark 2 (UKTM no. 3362833; registered 29 March 2019): a series of stylised/device marks registered in Class 43. The specification includes temporary accommodation; provision of holiday accommodation; hotel services; hotel reservation services.
• Company A Mark 3 (UKTM no. 3515715; registered 25 July 2020): a word mark registered in Class 36 for accommodation bureau services [apartments]; letting, management and rental of apartments. Company A acquired this mark by assignment on 24 January 2024 (after the defendant had begun use of the contested branding).
• Company B Mark 1 (UKTM no. 3601725; registered 26 February 2021): a series of figurative marks registered in Class 43 for hotels, hotel reservations and related services.
• Company B had used, since 2007, a distinctive figurative device (an anthropomorphic moon-and-star device on a purple background) together with the sign associated with the hotel business; from 12 April 2021 Company B introduced marketing material and device "lock-ups" that include an endline composed of the words "Rest easy" in a stylised handwritten script ("Company B Rest Easy Device"). Those devices and word-uses are the signs complained of by Company A.

Overview of procedural history (as recorded in the judgment):

• Original proceedings issued on 5 September 2023 by Company A, initially pleaded under section 10(3) of the Trade Marks Act 1994 in respect of Company A Mark 1 and Company A Mark 2.
• By amendment in March 2024 Company A added an alternative claim under section 10(2) based on Company A Mark 3. Company A had acquired Mark 3 by assignment in January 2024.
• Company B defended and counterclaimed alleging invalidity of certain Company A marks under section 47; that counterclaim was not pursued at first instance following earlier authority and so the trial did not determine it.
• Case management: directions and a split trial were given; Company A applied for permission to adduce survey evidence and to amend pleadings. On 21 January 2025 Judge Ashworth gave permission to amend and to adduce survey evidence on defined terms.
• Pre-trial review occurred on 11 March 2025; the trial itself sat over five days in April 2025 (two days of witness evidence, the rest submissions). Further written submissions were filed on 15 August 2025. Judgment was handed down on 29 August 2025.

The primary statutory provisions engaged were sections 3, 5, 9, 10 and 47 of the Trade Marks Act 1994; the main questions were whether Company B's use of the "Rest easy" material (in its lock-ups and in other marketing) infringed Company A's registered rights under sections 10(2) and 10(3), and whether Company B's own registration was invalid by reason of the asserted earlier rights.

Legal Issues Presented

1. Whether Company B's use of its "Rest easy" device/lock-up (the "Company B Rest Easy Device") and related uses amounted to infringement of Company A Mark 3 under section 10(2) of the Trade Marks Act 1994 (i.e., whether use of a sign similar/identical to the trade mark for similar/identical services gives rise to a likelihood of confusion).
2. Whether Company B's use of its signs amounted to infringement of Company A Mark 1 and/or Company A Mark 2 under section 10(3) of the Trade Marks Act 1994 (i.e., whether the earlier marks had a reputation and whether a link was formed causing detriment or unfair advantage without due cause).
3. Whether Company A had established (for section 10(3) purposes) reputation and enhanced distinctiveness for each mark alleged (including whether any reputation could be supported by survey evidence).
4. Whether Company B's registration (Company B Mark 1) was liable to invalidation under sections 5(2) and/or 5(3) of the 1994 Act by reason of Company A's earlier rights.
5. Whether Company B's pleaded counterclaim under section 47 (that Company A's later marks were invalid for not being a single sign or not clearly represented) should be determined at first instance (this was not pursued at first instance and so was not decided).
6. Ancillary: the admissibility and weight of survey evidence conducted for Company A and the proper treatment of any "family of brands" argument asserted by Company A (and whether that doctrine could be relied upon, given Company A's earlier disavowal of the family-of-marks doctrine at a case management hearing).

Arguments of the Parties

Plaintiff's Arguments (as pleaded and advanced at trial)

• Company A alleged that Company B's use of the "Rest easy" wording and the associated lock-up devices infringed Company A Mark 3 under s.10(2) because the signs were similar and were used in relation to services identical or highly similar to those for which Mark 3 is registered (letting/rental of apartments vs hotel services).
• Company A also alleged that Company A Mark 1 and Company A Mark 2 enjoyed reputation and enhanced distinctiveness in the UK (in particular in relation to hotel and temporary accommodation services) and that Company B's use took unfair advantage of, and/or was detrimental to, the distinctive character or repute of those marks contrary to s.10(3).
• Company A sought to rely on survey evidence to demonstrate reputation and enhanced distinctiveness (permission given for two pilot surveys), and argued that the surveyed associations supported the existence of links between the contested signs and Company A's marks.
• Company A's pleaded particulars at trial included an assertion that the "easy" family of brands and use across related businesses assisted the marks in acquiring enhanced distinctiveness (although Company A had disavowed reliance on the formal family-of-marks doctrine at an earlier hearing, it advanced factual points about use within its wider branded portfolio).
• Company A further submitted that (i) Company B must have been aware of the risk of association and had acted recklessly ("living dangerously"), and (ii) that the consequence of Company B's use was likely to be unfair advantage and dilution/detriment to Company A's licensing capacity and brand functions.

Defendant's Arguments (as pleaded and advanced at trial)

• Company B denied infringement. It submitted that the primary impression of its signs is dominated by Company B's own name and the moon device; the "Rest easy" element is a common English idiom used as marketing copy, and, outside the specific lock-up device, ordinary textual uses of the phrase were not used as trade marks (i.e., not use as a badge of origin).
• Company B challenged Company A's reliance on any claimed family-of-marks or on the survey evidence. It argued that the surveys were flawed in various respects (including coding concerns) and that a solicitor's coding of open answers was inappropriate and should be excluded; Company B pointed to its own large datasets of customer feedback and searches showing no evidence of consumer confusion.
• Company B submitted that Company A had not proved the necessary reputation or enhanced distinctiveness for Company A Mark 2 (the stylised/device mark) for the services claimed; Company B accepted only limited reputation for Company A Mark 1 (hotel accommodation) where admitted by Company B but otherwise required proof.
• Company B denied that any use by it took unfair advantage or caused detriment: there was no evidence of changed consumer behaviour or lost licence value, and Company B's rebranding (including adoption of the endline) was developed independently by advertising agencies and was not intended to trade on Company A's rights.

Table of Precedents Cited

The judgment refers extensively to established authority. The table below lists the cases cited in the judgment, the legal rule or principle for which each was cited in the judgment, and how Judge Ashworth applied or relied on that precedent in reaching the decision. (Entries reflect the use of each authority in the judgment text.)

Precedent	Rule or Principle Cited For	Application by the Court
Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 455	Fundamental test for section 10(2): compare notional/fair use of the mark and the actual use of the sign and ask whether the average consumer might think the goods/services come from the same or economically linked undertakings.	Adopted as the defining enquiry for the s.10(2) assessment (quoted at paragraph [39] of the judgment) and applied when testing whether the signs used by Company B produced a likelihood of confusion with Company A Mark 3.
Levi Strauss & Co v Casucci SpA (C‑145/05) [2006] ETMR 71	The relevant date for assessing infringement is the date the complained-of action commenced.	Used to set and accept the parties' agreed Relevant Start Date (12 April 2021) for the infringement assessment.
SkyKick UK Ltd v Sky Ltd [2024] UKSC 36	Essential function of a trade mark: to guarantee identity of origin (a "badge of origin").	Used to frame the court's approach to distinctiveness and the primary role of marks when assessing whether Company B's signs impinged Company A's trade mark function.
Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (Case C‑342/97) [1999] ECR I‑3819	Definition and characteristics of the "average consumer": reasonably well informed, reasonably observant and circumspect.	Applied in assessing how the average consumer would perceive the contested signs and marks when conducting global appreciation tests for confusion and link.
Lidl v Tesco [2024] FSR 17	Summary and exposition of the "average consumer" concept and guidance on link and detriment under s.10(3); applied the Specsavers approach to context.	Relied upon for the agreed "legal primer" principles: how to assess the average consumer, link under s.10(3), and aspects of detriment/unfair advantage.
JW Spear & Sons v Zynga [2015] EWCA Civ 290	Principles for assessing similarity of mark and sign: visual, aural and conceptual similarity and the need for an overall assessment.	Applied to assess whether Company A's marks and Company B's signs were similar enough to trigger the relevant statutory protections (the judge followed the phonetic/visual/conceptual approach).
Extreme Networks Ltd v Extreme E Ltd [2024] EWCA Civ 1386	Guidance on assessing similarity of goods/services and interpreting specifications (factors to consider: nature, intended purpose, method of use, trade channels, competition/complementarity).	Used to compare the services for which Company A Mark 3 was registered (letting/rental of apartments) with Company B's hotel services and to determine the degree of similarity (court found a medium level of similarity for letting/rental v hotel services).
Canon (CJEU)	Factors to assess similarity of goods/services (nature, intended purpose, method of use, trade channels, competition/complementarity).	Quoted through Extreme Networks and applied to the analysis of similarity between apartment rental/letting and hotel services.
The Sunrider Corp v OHIM (Case C‑416/04 P) and Les Éditions Albert René SARL v OHIM (Case C‑16/06 P)	Further CJEU authority on assessing similarity of goods/services (re-affirming Canon factors).	Referred to alongside Canon in discussing the factors relevant to comparing specifications.
British Sugar plc v James Robertson & Sons Ltd ("TREAT") [1996] RPC 281	List of practical factors (Jacob J) relevant to similarity assessment applied by later authorities.	Used as background authority for the list of factors the judge took into account in comparing services.
Sky plc v SkyKick UK Ltd [2020] EWHC 990	Principles for interpreting specifications (general terms should be confined to core meanings; unclear terms should be interpreted narrowly).	Applied in interpreting scope of Company A's registrations when comparing the actual use of Company B's signs to the registered services.
Morley's (Fast Foods) Ltd v Nanthakumar [2025] EWCA Civ 186	Endorses the UKIPO's standardised summary for assessing likelihood of confusion (global appreciation taking all factors into account).	Adopted as the framework (paragraph [133] in the judgment) for conducting the global appreciation test under s.10(2).
Iconix Luxembourg Holdings SARL v Dream Paris Europe Inc [2025] UKSC 25	Recent Supreme Court authority on trade mark matters (referred to by the parties).	Not relied upon as changing the agreed legal primer, but the judgment was considered for any potential impact; parties were invited to make submissions and did so.
easyGroup Ltd v Easy Live (Services) Ltd [2025] EWCA Civ 946; easyGroup Ltd v Easyfundraising Ltd [2025] EWCA Civ 1000	Recent Court of Appeal authority in the easyGroup line of cases (referred to parties after reserved judgment).	Judge Ashworth invited further submissions on their relevance; those submissions were considered in finalising the judgment.
Liverpool Gin Distillery Ltd v Sazerac Brands LLC [2021] EWCA Civ 1207	Explanation of direct and indirect (or "wrong way round") confusion.	Used to frame the possible kinds of confusion (direct, indirect, wrong‑way) and to test Company A's contention as to likely "wrong way round" confusion.
Sabel BV v Puma AG (C‑251/95) (CJEU)	Fundamental CJEU principles on confusion and assessment of similarity and impression created by marks.	Referred to in the general exposition of confusion principles and types of confusion to be guarded against by trade mark law.
LA Sugar Ltd v Back Beat Inc (O/375/10) (Appointed Person)	Discussion of the nature of indirect confusion and categories where consumers infer a commercial link between marks.	Used to analyse the plausibility of Company A's suggested mental process (indirect confusion) and to emphasise that indirect confusion requires a proper evidential basis.
Cheeky Italian Ltd v Sutaria (O/219/16)	Emphasises that indirect confusion is not a consolation prize and needs proper basis.	Referred to when assessing Company A's indirect/wrong-way confusion arguments: the judge required a reasonably special set of circumstances to find indirect confusion absent direct confusion.
Match Group LLP v Muzmatch Ltd [2023] EWCA Civ 454	Absence of evidence of actual confusion is not necessarily fatal to a claim; however, the longer parallel use continues without evidence of confusion, the more weight that absence carries.	Applied: judge found no evidence of actual confusion and considered the nearly four-year period of use by Company B significant in assessing the plausibility of real-world confusion.
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24	When assessing likelihood of confusion the court must consider the context in which the sign is used and not strip the sign of its context.	Applied in assessing Company B's actual use (the lock-up device and marketing context) rather than a decontextualised comparison; judge examined how the sign appears to consumers in situ.
W3 Ltd v Company A (an earlier case involving Company A) [2018] EWHC 7 (Ch)	Review of law on acquired distinctiveness; discussion of family/series of marks doctrine and the limitations when considering a word mark in isolation.	Used as background authority and as a prior analysis relevant to Company A's claimed acquired distinctiveness (the judgment in the present case referred to the W3 analysis and distinguished the present facts accordingly).
Société des Produits Nestlé SA v Cadbury UK Ltd ("Nestlé v Cadbury I") [2014] EWHC 16 (Ch)	Set out the propositions on acquisition of distinctive character through use and the factors relevant to such assessment.	Quoted and relied upon when assessing whether Company A's marks had acquired distinctive character through use and what evidence was required to show enhanced distinctiveness.
Enterprise Holdings, Inc v Europcar Group UK and Another [2015] EWHC 17	Practice on permission to adduce survey evidence in litigation; expectations about the treatment of survey methodology.	Judge Ashworth referred to the practice and allowed the surveys to be admitted on a limited basis, reserving full criticism for trial (and then considered expert evidence about surveys).
Imperial Group Plc v Philip Morris Ltd [1984] RPC 293 (Whitford)	Guidelines (Whitford) for proper conduct and reporting of surveys used in trade mark/passing-off litigation.	Applied as the benchmark for evaluating the admissibility and weight of the survey evidence: judge considered compliance with Whitford and whether the surveys were of real value.
Interflora Inc v Marks & Spencer Plc [2012] EWCA Civ 1501	Endorsement and summarising of Whitford survey principles and the requirements for survey evidence in trade mark proceedings.	Used to assess the claimant's survey methodology and the scope of criticisms that the defendant was permitted to raise.
Decathlon v EUIPO (T‑139/9 EU T 2020 488) [2021] ETMR 11	Discussion of family/series of marks and whether presence of a family can assist in establishing enhanced distinctive character.	Considered in the context of Company A's submissions about its "family" and whether association with other "easy" brands could support reputation/enhanced distinctiveness; judge treated the pleaded family argument as disavowed and, in any event, not proven on the facts.
Il Ponte Finanziaria SPA v OHIM (Case C‑234/06 P) [2008] ETMR 13	Explains when a group of earlier marks may constitute a family/series such that a likelihood of association/confusion may arise.	Referred to when considering whether Company A could rely upon a family/series argument to bolster reputation and confusion; judge concluded the family argument was disavowed and not established.
Medion AG v Thomson Multimedia (C‑120/04) [2006] ETMR 13	Where a composite sign contains an element identical or similar to an earlier mark which still retains an independent distinctive role within the composite, that may give rise to a likelihood of confusion (subject to global appreciation).	Considered by the judge when evaluating Company A's contention about the "Rest easy" element retaining an independent role in Company B's lock-ups; judge concluded the element did not retain an independent distinctive role and Medion did not drive a finding of confusion here.
Rousselon Frères et Cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch) [2008] RPC 30	There will be a likelihood of confusion if the earlier mark retains an independent distinctive role in a later composite mark, but a global assessment is required.	Used to explain the limits of the Medion principle and to emphasise that even if an element has an independent role, global assessment may nonetheless find no confusion; applied in the present global assessment.
Aveda Corp v Dabur India Ltd [2013] EWHC 589 (Ch)	Illustrated application of Medion and the approach to the independent significance of a component within a composite mark.	Referred to on the question whether a component of Company B's composite mark ("Rest easy") retained independent significance such that a link/confusion would follow; judge contrasted facts and found Company B's device dominated.
Combe International LLC v Dr August Wolff GmbH & Co KG Arzneimittel [2021] EWHC 3347 (Ch)	Further recent exposition on treatment of composite signs and the independence of components for confusion analysis.	Considered by the judge when examining composite‑sign arguments; used to reinforce the need for a full global comparison.
Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch)	Where a proprietor uses minor variants of a registered mark in trade, such variants can be relevant to acquired distinctiveness (practical tolerance for minor variations).	Applied in the context of assessing whether stylised uses of Company A's device element in combination (e.g. as part of easyJet/easyHotel stylisation) could count as use of Company A Mark 2; judge accepted that minor variation does not necessarily defeat use for distinctiveness purposes.
easyGroup Ltd v Easyway SBH [2021] EWHC 2007 (IPEC)	Earlier decision in the line of cases concerning the use of colour and form; addresses considerations when comparing signs and marks including colour disallowance in comparisons for some purposes.	Referred to confirm that colour may be relevant to use and distinctiveness but cannot always be used in literal comparison; judge noted limits on taking colour into account when comparing word marks to composite devices.
Ferrero SpA v OHIM (C‑552/09 P) [2011] ETMR 30	Confirms that even a low degree of similarity can be sufficient to establish similarity for the purposes of Article 9(1)(b)/s.10(2) in appropriate circumstances.	Invoked when Judge Ashworth held that, although similarity between the marks and signs was very low, that could still suffice for the s.10(3) "link" requirement (a lower threshold than s.10(2) confusion).
Nicoventures Holdings Ltd v The London Vape Co. [2017] EWHC 3393 (Ch)	Illustrates that low similarity and other factors can be decisive against confusion in the global appreciation.	Used as an example of a situation where low similarity counted against a finding of likelihood of confusion; the judge relied on that approach where low distinctiveness and dominance of Company B's own branding weighed against confusion.
Avnet Inc v Isoact Ltd [1998] FSR 16; Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159	Authority on interpretation of general terms in specifications and narrower construction of service specifications.	Referred to when confining the meaning of Company A's registered services to their core meanings, particularly for the class 36 and class 42 specifications.
General Motors Corporation v Yplon SA (Case C‑375/97)	Explains reputation threshold under Article 5(2) (s.10(3)): reputation = knowledge of the mark among a significant part of the relevant public.	Applied by the judge in assessing whether Company A's marks had the required reputation in the UK for s.10(3) purposes; judge required evidence of knowledge by a significant part of the relevant public for the relevant services.
Environmental Manufacturing LLP (Wolf Head) v OHIM (C‑383/12 P)	On detriment: absence of direct evidence of harm may be compensated by logical deductions, but such deductions must be founded on a proper analysis of probabilities and not mere supposition.	Quoted in considering Company A's detriment allegations; judge required evidential foundation and rejected mere supposition that Company B's use would dilute Company A's marks.
Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5; L'Oréal v Bellure (CJEU)	Principles for assessing unfair advantage: global assessment taking into account the strength of reputation, degree of similarity, nature of goods/services, and whether the defendant sought to "ride on the coat‑tails" of the earlier mark.	Used to evaluate Company A's unfair advantage claim; judge found no evidence Company B sought to ride on Company A's reputation or caused unfair advantage in the relevant sense.
Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110	Even absent subjective intention, objective effect of enabling a defendant to benefit from a mark's reputation can amount to unfair advantage.	Considered in the unfair advantage analysis; judge nonetheless found on the facts no objective taking of unfair advantage by Company B.
Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211	Restatement: mere commercial advantage is not enough for unfair advantage; evidence of changed economic behaviour can establish unfair advantage.	Invoked when considering whether Company A had evidence that Company B's use had altered consumer behaviour; judge concluded no such evidence had been adduced.
Neutrogena v Golden [1996] RPC 473	Describes the role of the trial judge: make overall "jury" assessment, using common sense and the evidence; if judge's view is marginal, claim fails absent sufficient evidence.	Applied as a reminder of the court's evaluative role when weighing the totality of evidence (Judge Ashworth emphasised his own assessment supplemented by evidence).
PlanetArt (cited in judgment)	Used in prior authorities discussing circumstances in which a serious risk of detriment can be established by deduction rather than direct evidence.	Referred to when discussing the possibility of establishing detriment by deduction; judge required a proper evidential foundation and rejected speculative deduction in this case.

Court's Reasoning and Analysis

Judge Ashworth conducted a methodical statutory and fact-driven analysis consistent with the legal primer agreed between the parties. Below is a structured summary of his step-by-step reasoning, limited to the material and conclusions contained in the judgment.

Preliminary legal framework and relevant dates

• The judgment recalled the statutory tests under the Trade Marks Act 1994 (sections 3, 5, 9, 10 and 47) and prominent CJEU/UK authorities describing the role of marks (badge of origin), the average consumer, distinctiveness and the tests for infringement under s.10(2) and s.10(3).
• The parties agreed the relevant dates: the Relevant Start Date for assessing infringement was 12 April 2021 and the Relevant Filing Date for invalidity was 26 February 2021 (the dates used in the judgment).
• The court accepted the agreed characterisation of the average consumer as an ordinary member of the public accustomed to using the internet to book hotels, with a medium level of attention for hotel‑related services.

Admissibility and weight of survey evidence

• Permission had been given to adduce two pilot surveys subject to the Whitford principles. The judge reviewed the surveys, the evidence of the survey author (an independent research director) and the defendant's criticisms (by a marketing expert).
• The judge excluded a coding exercise (GW14) that had been performed by Company A's solicitor rather than by an expert. That coding was treated as inadmissible for purposes of the expert comparison because it was partisan and not produced by an impartial expert witness.
• Although the survey process complied with the Whitford guidelines sufficiently for admission, the judge concluded that the surveys did not, on analysis, provide reliable evidence that the stylised Company A device (Company A Mark 2) had acquired reputation/enhanced distinctiveness for the services in issue. The surveys showed greater association with another member of Company A's wider portfolio (an airline brand) than with hotels; the judge accordingly afforded only limited weight to the surveys for establishing the reputation/enhanced distinctiveness points Company A sought to prove.

Section 10(2) claim (Company A Mark 3 v Company B signs)

The six conditions for s.10(2) infringement were tested. The court's key findings were:

• Use in the course of trade (condition (ii)): the court found that the words in the "locked up" Company B Rest Easy Device were used as a badge of origin by Company B (i.e., use in the course of trade). By contrast the judge concluded that ordinary textual uses of the phrase "rest easy" in marketing copy (outside the lock‑up) were ordinary idiomatic English and not use as a trade‑mark badge of origin for the purposes of s.10(2).
• Similarity of sign (condition (iv)): comparing Company A Mark 3 (a word mark registered for "Rest Easy Apartments" type services) with Company B's locked-up device, the judge found a measure of aural similarity limited to the shared words "rest easy", but overall visual and conceptual similarity was low. Company B's device (with the moon device and the Company B house name) dominated the overall impression.
• Similarity of services (condition (v)): interpreting the specifications narrowly where appropriate, the court held that "letting/rental of apartments" had a degree of similarity with hotel services (medium similarity), but other registered services for Company A Mark 3 (e.g., management of apartments) were not similar to Company B's actual provision of hotel services.
• Likelihood of confusion (condition (vi)): conducting the global appreciation, the court concluded that the low distinctiveness of the words "rest easy" and the low overall similarity between Company A Mark 3 and Company B's signs, combined with the dominance of Company B's own brand elements, meant the average consumer would not be likely to be confused (including wrong‑way or indirect confusion). The absence of any evidence of actual confusion over almost four years of parallel use reinforced that conclusion.

Conclusion on s.10(2): Company A's claim under section 10(2) in respect of Company A Mark 3 was dismissed.

Section 10(3) claim (Company A Mark 1 and Company A Mark 2 v Company B signs)

The s.10(3) analysis required a separate multi-stage assessment: reputation, use, similarity, link, injury (detriment or unfair advantage), and due cause. The judge addressed these conditions as follows.

Reputation and enhanced distinctiveness (condition (i))

• The court treated Company A Mark 1 and Company A Mark 2 separately. It found that Company A Mark 1 (the word mark series registered in Class 42) did have a reputation in the UK for hotel accommodation / temporary accommodation (Company B had admitted reputation for hotel accommodation in its pleading). The court concluded that, as at the Relevant Start Date, Company A Mark 1 had a moderate enhanced distinctiveness arising from its use (noting that most use of that reputation was in a particular stylised form).
• Company A Mark 2 (the stylised/device mark) was held not to have evidence of reputation or enhanced distinctiveness in respect of the registered services for the purpose of the s.10(3) claim: the survey evidence did not reliably demonstrate that the stylised device had acquired reputation for the services in issue; the documentary and other evidence offered by Company A did not prove the required knowledge by a significant part of the public for these services.
• Company A had disavowed reliance on the formal "family of marks" doctrine at the case management hearing; the court treated any residual attempt to rely on reputation being derived from a wider "family" of "easy" brands as either disavowed or, in any event, not proved on the facts.

Use in the course of trade (condition (ii)/(iii) applied)

The court repeated its analysis from the s.10(2) section: the Company B locked-up device was used as a badge of origin (trade mark use); plain textual use of "rest easy" in marketing copy, not shown in lock-up, was ordinary idiomatic usage and not use as an indicator of origin.

Similarity and link (conditions (v) and (vii))

• Similarity: the court found only a very low visual/aural similarity between Company A's marks and Company B's signs. The judge emphasised that the word element (the ordinary word) is not inherently highly distinctive and that the overall impression of Company B's devices was dominated by Company B's own word and moon device elements.
• Link: on the global assessment, the judge found that the low similarity, together with the limited or absent reputation of Company A Mark 2 and only a moderate reputation for Company A Mark 1 (confined to hotel accommodation and largely in a stylised form), meant the average consumer would not make the required "link" in the mind of the public between Company B's signs and either of Company A's marks.
• The judge expressly rejected Company A's principal contention that the most likely form of confusion would be wrong‑way confusion whereby consumers would infer Company A operated apartments because of Company B's lock-up: the court concluded that the "rest easy" element did not retain an independent distinctive role in Company B's device and Company B's own brand elements would prevent such a link.

Detriment and unfair advantage (condition (viii))

• Detriment (viii)(a): Company A relied upon the risk of dilution and loss of licensing value. The judge required evidence of actual change in economic behaviour or a properly-founded deduction of a serious likelihood of such change. No such evidence was produced; accounts showed increases in Company A's hotel turnover in later periods and there was no responsive corrective advertising or other evidence of damage. The court therefore rejected the detriment claim.
• Unfair advantage (viii)(c): applying the L'Oréal v Bellure approach (and subsequent domestic authority), the court required a global assessment considering reputation, similarity, and whether Company B sought to "ride on the coat‑tails" of Company A. The court found no evidence that Company B intended to ride on Company A's reputation; internal Company B documents showed the endline was developed independently by agencies and was intended to convey "peace of mind" rather than to exploit any Company A reputation. The judge found no taking of unfair advantage on the pleaded facts.
• Living dangerously/recklessness: the judge examined internal emails and the pre-launch exchange within Company B. On the evidence the court concluded Company B did not appreciate the use as posing the legal risk asserted by Company A; there was no recklessness of the kind that would assist Company A's case.

Due cause (condition (ix))

The court did not need to decide this in the claimant's favour because the case failed at earlier steps; the judge observed that had he found infringement it would have been difficult for Company B to establish due cause on the facts.

Invalidity and counterclaim

Company A sought declarations of invalidity against Company B's registration under s.5(2) and s.5(3) insofar as related to the alleged infringements. Because the court found no infringement under s.10(2) or s.10(3), Company A accepted (and the court recorded) that these invalidity claims fell away; accordingly the invalidity declarations were dismissed. The counterclaim advanced by Company B under s.47, which had been preserved for appeal, was not addressed at first instance because it was not pursued further (following earlier appellate authority).

Holding and Implications

The court's dispositive conclusions are:

THE CLAIM BY COMPANY A IS DISMISSED.

Specifically:

• Company A's claim under section 10(2) (infringement of Company A Mark 3 by Company B's signs) failed and was dismissed.
• Company A's claims under section 10(3) (infringement of Company A Mark 1 and Company A Mark 2 by Company B's signs) failed and were dismissed.
• Company A's related applications for declarations of invalidity against Company B's registration were dismissed (they fell away in light of the negative infringement findings).

Implications and immediate consequences (as stated in the judgment):

• The direct effect is that Company A obtains no relief and Company B may continue to use the contested signs and devices as at the time of trial. No injunctions, declarations of invalidity or damages were awarded in favour of Company A.
• The decision turned on a careful, fact-specific application of settled principles: the degree of distinctiveness of the contested elements, the context and form in which Company B used the signs (lock‑up device v ordinary copy), the relative dominance of Company B's own brand elements, and the absence of persuasive evidence of reputation/detriment or actual confusion.
• The court did not purport to announce a novel legal principle; rather it applied established authorities to the facts of the case. The judgment therefore does not create a new precedent beyond the incremental application of existing law to these facts.
• The judge did not decide Company B's counterclaim (section 47) at first instance; Company B reserved its rights to pursue those points on appeal if it wished.

Administrative direction: Counsel were asked to prepare a draft order reflecting the contents of the judgment for the judge's approval, and the judge noted he would deal with any points of disagreement subsequently.