In brief
- The use of modified versions of registered trade marks will be acceptable if those variants do not alter the distinctive character of the trade marks.
- An assessment of the similarity between a mark and allegedly infringing sign cannot depend on the goods/services in respect of which the sign has been used - otherwise this could result in conflicting decisions for different goods and services.
- Conceptual counteraction (where a clear conceptual difference between the mark and sign can neutralise their visual and aural similarities) did not apply in this case. The variations in meaning for the adjective and verb of 'live' should have been considered.
Background
easyGroup's licensee, Easylife, operates a merchandise catalogue retail business and provides advertising services through catalogue inserts. The defendants (Easy Live Services) operate an online platform enabling auction houses to transmit auctions to customers for real-time bidding, plus back-office software for auction houses, using the signs EASY LIVE and EASY LIVE AUCTION.
easyGroup alleged infringement of its registered 'EASYLIFE' trade marks. It also claimed that the defendants' 'EASY LIVE AUCTION' trade mark was invalid due to likelihood of confusion with its marks. The defendants counterclaimed for revocation of easyGroup's 'EASYLIFE' stylised mark for non-use.
The various EASYLIFE marks had been owned by third parties but were assigned to easyGroup and licensed back through a strategic settlement following proceedings brought by easyGroup.
High Court decision
The High Court dismissed easyGroup's infringement claim, finding no likelihood of confusion despite there being moderate similarity between the marks and the defendants' signs. The court held that 'easy' was descriptive and there was no convincing evidence of actual confusion. As there was no likelihood of confusion, the court also dismissed easyGroup's application to invalidate the defendants' trade mark and refused their invalidity counterclaim against the 'Easylife' word mark.
A revocation counterclaim in respect of the stylised 'Easylife' mark was only partially successful (it was revoked for class 39 services but not 35). Whilst easyGroup had not used the stylised mark in the form registered, but in the variant forms set out in the table above, the court concluded that these variants did not alter the distinctive character of the stylised mark.
easyGroup appealed in relation to the non-infringement and non-invalidity findings and the defendants cross-appealed on the revocation counterclaim.
Court of Appeal decision
The Court of Appeal allowed both appeals in part, finding infringement of easyGroup's marks by use of the 'EASY LIVE' sign, whilst otherwise dismissing easyGroup's appeal. The court allowed the cross-appeal to the extent of substituting "providing advertising or promotional space in printed publications" for "advertising services; promotional services" in the specification of the stylised 'Easylife' mark but otherwise dismissed it.
(i) 'Variant Forms' accepted as use of registered mark
The Court of Appeal upheld the finding that easyGroup's use of modified versions of its stylised registered mark constituted acceptable variants. The differences did not alter the distinctive character because consumers would see 'Easylife' as the dominant element, which remained aurally identical and visually very similar, with the word being conceptually dominant in the variants. This was even the case with the addition of the 'tickball' (a larger white tick in a black circle) in the variants as opposed to a tick in a triangle above the 'i' of 'Easylife' in the registered mark.
(ii) Conceptual similarity analysis
The Court of Appeal's most significant intervention concerned the conceptual similarity between 'Easylife' and 'EASY LIVE'. The court allowed easyGroup's appeal, finding that the mark and sign did have conceptual similarity. The High Court judge had erred in law by failing to explain the two concepts of 'LIVE' as a verb and an adjective, noting there was "nothing to indicate to consumers that the word "live" functions as an adjective and that it is to be pronounced with a long "i", and it is at least equally likely to be understood to function as a verb and to be pronounced with a short "i'".
(iii) Likelihood of confusion: a narrow victory for easyGroup
The Court of Appeal found some conceptual similarity and considerable visual and aural similarity between the word Mark 'Easylife' and 'EASY LIVE', noting that, although 'Easylife' was a compound word whereas 'EASY LIVE' comprised two words, "the average consumer would be likely either not to notice or to misremember this difference". The court emphasised that similarity cannot depend on the goods or services in relation to which the sign has been used; otherwise, the same mark and sign could be both similar and different depending on the goods or services.
The Court of Appeal held that the word mark 'Easylife' and 'EASY LIVE' were confusingly similar and confusion was inherently more probable in respect of the word mark than the stylised mark. Because the defendants' use of the 'EASY LIVE' word sign (as opposed to its stylised sign) was infrequent, confusion was less likely to have occurred and been detected.
Takeaways
The court's decision confirms that modified versions of registered marks can constitute acceptable use of the mark, provided the distinctive character remains unchanged. Here, the court held the tickball did not feature in oral use and could have been easily forgotten, and the strapline under 'Easylife' was depicted in smaller font, so the words were of little distinctive character and so the average consumer would not regard them as altering the distinctive character of the mark.
It also demonstrates that the conceptual similarity analysis must be context-independent - mark and sign comparisons must be conducted without reference to the specific goods or services involved.
Finally, partial revocation will reflect commercial reality. The court will restrict trade mark specifications to reflect actual use, demonstrating the importance of maintaining focused and defensible trade mark portfolios.