In a recent judgment by the High Court, easyGroup Limited, owner of IP rights in relation to various 'easy' related businesses, lost its claim for trade mark infringement against Beauty Perfectionists Limited, the operator of an online retail business using the brand easyCOSMETIC. The judgment sheds light on issues such as assessment and relevance of claims involving an alleged 'family' of marks, including across different territories. It also highlights the potential impact on the assessment of a likelihood of confusion where there is a lengthy period of time between alleged infringing use commencing, and enforcement action being taken.
Background
The case focused on easyGroup's allegations that the easyCOSMETIC branding infringed upon easyGroup's EU trade marks. Whilst easyGroup relied on a number of marks initially, the mark alleged to be infringed was the word mark for EASYJET. However, easyGroup also argued that the Court should take into account the reputation of the 'easy family of brands' in general and the common stylisation used for those brands. Examples included in the judgment include:
easyGroup argued that the similarity between its trade marks and the easyCOSMETIC signs could lead to confusion among consumers, potentially believing that easyCOSMETIC was linked to or affiliated with easyGroup.
The Defendants' signs are shown above: the sign with 'easy' in orange was used between 2009 and 2016, with the sign with 'easy' in white used from 2017 to 2022. easyCosmetic business was established in 2008 and, since that point, has offered online services for beauty products, including perfumes, toiletries and accessories, and cosmetics. Its products have been directed at consumers in Germany, Austria, Switzerland, the Netherlands and Belgium.
easyCosmetic filed a counterclaim for partial revocation of easyGroup's EASYJET mark for non-use, arguing that easyGroup had not made genuine use of its trade mark across the registered services in class 35 for a continuous period of five years. The mark was registered for "Retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses". easyCosmetic argued this should be limited to 'in-flight retail services' on the basis that such sales had only been made on board an easyJet flight.
Decision
The Court's judgment highlighted several principal considerations:
Partial revocation of trade mark
The Court partially revoked easyGroup's EASYJET trade mark, limiting the disputed services above to "in-flight retail services" from January 10, 2020, due to insufficient evidence of genuine commercial use in other retail contexts. The Court did note a potential divergence between the English and EU authorities in relation to partial revocation but, as the issues in the case arose prior to the UK leaving the EU, the Court adopted the EU approach.
'Family' of marks
The key issue here was whether, by the relevant dates, easyGroup owned a family of marks consisting of the word 'easy' and a second conjoined word referring to the goods/services offered.
Where a claimant has used a "family" of trade marks with a common feature, and the disputed sign shares that common feature, that may support a finding of a likelihood of confusion or for establishing a link between the mark and the sign.
Here, the Court concluded that an "easy" family of brands in the UK did exist, but only at certain points in time and only for certain brands. It did not extend to Germany and Austria, the regions which easyCOSMETIC targeted, where there was only limited use of two of the 'easy' marks on the market at the relevant time. Further, the Judge characterised as an "extreme proposition" by easyGroup that its use of a family of marks had come to indicate to the average UK consumer that the use of a mark comprising 'easy' as a prefix to a word alluding to goods/services was a reference to goods/services that were associated with, authorised or endorsed by easyGroup alone. Further, the reputation of the family did not rest on the use of the word 'easy' in the brand name alone but relied heavily upon common stylisation, colour and font as prescribed by easyGroup.
Whilst it was relevant to take account of the association of the 'easy' family marks with orange colouring when addressing infringement, the evidence did not establish that simply using 'easy' with a second word, and using orange/white colours, was at any material time perceived by consumers in the UK or elsewhere as indicating an easyGroup brand.
Likelihood of confusion
The Court went on to find that there was no likelihood of confusion between the EASYJET trade mark and the easyCOSMETIC sign. Whilst the marks shared some visual and conceptual similarities, the differences and the context of use in the easyCOSMETIC signs directed away from a likelihood of confusion. It was also notable that, despite extensive searches, there was no evidence of actual confusion amongst consumers, even though parallel trading had occurred for many years. In assessing the likelihood of confusion, the Judge considered the level of attention the average consumer would pay. For cosmetics and fragrances, the average consumer would likely pay an above average level of attention given these are products "applied to the face or body", a product category where consumers tend to have strong preferences and are knowledgeable.
The Court also rejected a claim for infringement based on detriment to distinctive character/unfair advantage. Whilst the easyCOSMETIC sign using the orange/black font would arguably lead to a link to the EASYJET mark in the mind of the average consumer, there was no detriment or unfair advantage taken.
Comment
The decision underscores the importance of being able to demonstrate genuine use of a trade mark when a mark holder wishes to protect a broad range of goods and services. It also shows the potential challenges in establishing a "family" of marks, particularly across different territories.
easyGroup first wrote to the Defendants in May 2011 (about use which had begun in 2008), but took no action until 2019 when they sent a letter before action (proceedings were issued in 2020). This passage of time was a relevant factor when considering the likelihood of confusion – not only was it notable that there was no evidence of actual confusion during an extended period of parallel trading, but the Court (if it had been necessary to do so) would also have taken into account the Defendant's honest concurrent use as a relevant factor. The case is therefore a reminder that trade mark owners should take quick and decisive action when faced with possible infringement.