In brief
In this case, the Court of Appeal overturned the High Court finding on the variant forms doctrine, finding that the modified versions of the registered marks in use were acceptable.
The Court of Appeal applied partial revocation principles, with the trade mark specifications being restricted to reflect actual commercial use.
No de minimis rule in test for genuine use – it is sufficient to provide evidence that demonstrates that a share of the market for the relevant goods or services has been created or preserved under the mark.
easyGroup failed on all of its infringement claims because there was insufficient likelihood of confusion given the differences between easyGroup's marks and the defendant's signs and the services of the same.
Background
Immediately after the Court of Appeal handed down its decision in the 'EASY LIVE' case, it also handed down its decision in this case. The appeals dealt with similar issues and there had been inconsistent findings at first instance between the two cases, notably in relation to the treatment of variants and the approach to likelihood of confusion.
As in the 'EASY LIVE' case, easyGroup relied upon its 'Easylife' trade marks, as well as some other marks (see table below). The defendants in this case operate a fundraising website at www.easyfundraising.org.uk which enables users to click through to various retailers' websites, with a proportion of the resulting commission being passed on to selected charities. The defendants originally traded under 'easyfundraising' before using 'easysearch' for an online search engine and used '@easyuk' as a social media handle.
easyGroup alleged that the various signs in the table below infringed its marks. The defendants counterclaimed for revocation of four of easyGroup's trade marks.
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easyGroup's registered trade marks
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Variants of marks used by easyGroup
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Defendants' signs
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Series mark: 'easylife' & 'Easylife'
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| EASYJET |
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easy.com
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EASYLIFE LIFESTYLE SOLUTIONS
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EASYFUNDRAISING |
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EASYLIFE |
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EASYSEARCH |
High Court decision
The High Court dismissed easyGroup's infringement claims, holding there was no likelihood of confusion as there was only a low level of similarity due to visual differences, and because the services bore little similarity. The court noted that any user of the defendants' website would be there for a specific reason and service that only it provided. The court considered eight instances of alleged actual confusion relied upon by easyGroup but found that none proved actual confusion.
The Court also wholly revoked: (i) the easy.com mark for lack of use, because it had only been used to promote other goods and services; and (ii) the stylised 'Easylife' mark because it had not been used in its registered form, and 'Easylife' alone did not make the mark distinctive so the variants' use did not amount to genuine use (it will be noted that this was a different outcome to the High Court's decision in 'EASY LIVE'). The court also partially revoked the EASYJET mark for lack of use and restricted it to "retail services provided to airline passengers".
There was also a passing off claim which failed.
easyGroup appealed in relation to infringement and revocation of 'easy.com' and partial revocation of 'EASYJET'. The defendants contingently cross-appealed in relation to the partial revocation.
Court of Appeal decision
The Court of Appeal dismissed easyGroup's infringement appeal, but found the High Court had erred in revoking the 'easy.com' and stylised 'Easylife' marks, and only partially revoked the latter.
Variant forms doctrine successfully applied
Adopting the same approach as in the EASY LIVE case, the Court of Appeal allowed easyGroup's appeal finding that the High Court in this case had erred in its evaluation of the distinctive character of the stylised 'Easylife' mark finding that the memorable part of the stylised mark was the compound word 'easylife', which may not be particularly distinctive, but gave it almost all its distinctive character, with other elements making only minimal contribution.
Since the judge's evaluation was flawed, the court reconsidered the issue and concluded that none of the variants altered the distinctive character of the stylised 'Easylife' mark.
Partial revocation principles clarified
Whilst the court held there was permissible variant use of the stylised 'Easylife' mark, it still partially revoked the mark, with the class 35 specification limited to "providing advertising and promotional space in printed publications" for the same reasons as set out above in 'EASY LIVE'.
Genuine use of 'easy.com' mark established
The Court of Appeal found that, on the facts, the average consumer would perceive the provision of easy.com's email service as competitive with other free email services rather than purely promotional for easyGroup's other services.
The court held the evidence "just establishes use which is sufficient to create or preserve a market share for email services under the trade mark bearing in mind the nature of the service and that there is no de minimis rule" (emphasis added) as, among other things, the email service had sufficient scale to justify migrating users rather than closing the service and the website had substantial page views and users.
Retail services differentiation
The court allowed the appeal on the partial revocation of the 'EASYJET' mark and substituted the High Court's order that the mark be limited to "retail services provided to airline passengers" for "retail services… provided by means of an internet website or on board an aircraft". The court concluded that retail services can be differentiated by medium, finding that the airline provides two sub-categories of retail services: (i) by means of an internet website and (ii) on board an aircraft, with an aircraft being such a unique type of premises that it can be differentiated from other kinds of premises.
No likelihood of confusion
Despite succeeding on various technical points, easyGroup failed on all of its infringement claims. The court found the defendants' arguments more persuasive, concluding that even for easyGroup's strongest case (@easyuk), the difference in services and between the easy.com mark and the defendants' sign meant no likelihood of confusion.
Takeaways
As with the 'EASY LIVE' case, in this case the court confirmed that modified versions of registered marks can constitute acceptable use of the mark, provided the distinctive character remains unchanged. Here, the court held that the compound word 'Easylife', whilst not particularly distinctive, gave the mark almost all of its distinctive character and whilst the other elements made a contribution to distinctive character, it was minimal.
The court will apply the 'use it or lose it' principle rigorously, restricting trade mark specifications to reflect actual commercial use. The court's willingness to recognise independent sub-categories based on different media demonstrates a practical approach to maintaining focused trade mark portfolios.
Descriptive elements can limit protection. The decision reinforces the ongoing challenges faced by easyGroup in protecting marks containing the descriptive word "easy". Despite some technical victories on revocation issues, the fundamental weakness of descriptive elements in preventing likelihood of confusion remains a significant limitation.