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How easyGroup found its wings clipped

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Adrian Dykes

Senior Associate

London

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24 April 2018

Adrian Dykes looks into how easyGroup found its wings clipped. [2018] EWHC 7 (Ch), W3 Ltd v easyGroup Ltd & Anor, High Court, 12th January 2018.

[2018] EWHC 7 (Ch), W3 Ltd v easyGroup Ltd & Anor, High Court, 12th January 2018.

Key points

  • EasyGroup’s easy trade mark has been declared invalid, being descriptive of advertising and temporary accommodation services
  • This case is a useful reminder that acquiring distinctiveness for some services does not sustain a broad specification

In this case, Arnold J handed down his judgment relating to the “easy” formative brands owned by well-known entrepreneur Sir Stelios Haji-Ioannou, founder of the Defendant company. The dispute boiled down to whether W3 infringed any valid “easy” EU trade mark (EUTM) owned by easyGroup by its use of the sign EasyRoommate (and variants thereof) in relation to online services for shared accommodation in the UK and eight other EU Member States.

The case dealt with evidence going back to the founding of easyJet in 1995, and it charted the development of the brands as Sir Stelios embarked on a licensing programme that sought to provide a range of value-based services to consumers – for example, easyInternetcafé, easyCar and easyCruise. Of particular relevance was easyHotel, launched in September 2004.

The dispute has a long history. The alleged infringing acts began in August 2000, when W3’s EasyRoommate business expanded from the US and France into the UK. In response, easyGroup sent its first cease-and-desist letter to W3 in 2003, and the parties then exchanged rounds of correspondence intermittently for about 12 years, apparently in vain. By May 2015, W3 had issued proceedings against easyGroup for unjustified threats. Relying on Articles 9(2)(b) and 9(2)(c) of the Trade Mark Regulation, easyGroup counterclaimed for infringement and for passing off. W3 counterclaimed for invalidity on absolute and relative grounds, and for revocation on the basis of non-use.

The complex factual matrix was dissected over eight days in the High Court.

easy EUTMs

The Defendant relied on a number of its easy-formative EUTMs, including easyJet, EASY, easyHotel, easyDorm and EASYGROUP, which included class 42 and 43 services for temporary accommodation. It also relied on “family of marks” arguments as a result of its use of the “easy–” prefix.

In the case of the EASY registration, W3 alleged that this mark was descriptive of advertising and temporary accommodation services, relying on dictionary definitions and unchallenged expert evidence that EASY is the 31st most common adjective and 475th most common word in the English language. Conversely, easyGroup argued that EASY was merely laudatory “at worst”.

Arnold J agreed with W3, holding that the word denoted a quality or characteristic of the services. He went on to consider distinctiveness acquired through use, both of the mark on its own and as part of the easy[Services] marks, the relevant date being October 2017, when W3 amended its counterclaim. The Court considered a body of evidence submitted by Sir Stelios, including examples of use, evidence of confusion and press articles expounding his brand. W3’s evidence of use of “easy” on its own was also relied on by easyGroup.

The Court concluded that, while there was extensive use of the marks, it did not amount to acquired distinctive character for the relevant services, and the EASY mark was invalidated for these services.

The infringement case therefore fell to be determined in relation to the remaining “easy” trade marks as of August 2000, and again in 2009, when the EasyRoommate branding changed.

Failure to confuse

In relation to likelihood of confusion, in spite of the inherent distinctiveness of the remaining easyGroup marks, the identity of services and evidence of confusion, Arnold J concluded that there was no likelihood of confusion in relation to the marks used from 2000, largely because the easyGroup marks did not enjoy an enhanced distinctive character at that time, and a moderate level of consumer attention mitigated this. He concluded that the only common feature between the marks was the prefix “easy–”, which was descriptive and combined with another word to form a new word – this single similarity pointed towards an absence of a likelihood of confusion. Even when the later period was considered, with a more enhanced distinctive character, more evidence of confusion and the enhanced protection associated with “family marks”, the infringement case failed under Article 9(2)(b).

Airline impact

The Defendant did not rely on its easyJet registration under Article 9(2)(b) – this was saved for Article 9(2)(c). W3 admitted, sensibly, the reputation of easyJet for passenger airline services at all relevant dates. Arnold J concluded that, for two of the other marks relied upon on this ground, namely EASYGROUP and EASY.COM, easyGroup had not proved a reputation at the relevant times, and that the easyJet reputation did not extend to temporary accommodation by 2009.

Arnold J was “narrowly persuaded” that “a significant proportion” of consumers, on seeing EasyRoommate in August 2000, would make a link to the easyJet trade mark “in the sense that the signs would have called the trade mark to mind”. However, this was not sufficient to make out infringement, as easyGroup failed to establish the damage requirement:

  1. dilution of the easyJet mark failed, as “easy” was held to be “far from unique” and there was no evidence of a change in the economic behaviour of the relevant consumers;
  2. there was no evidence of tarnishment; and
  3. although unfair advantage represented easyGroup’s strongest case, there was no reason to suppose that W3 benefited from the image transfer from easyJet or gained otherwise from the easyJet reputation.

By 2009, easyGroup’s position had improved: the easyJet reputation was greater; the easyHotel mark also had a reputation in the UK; the public had been educated about the “easy family of brands”; and W3’s use had changed slightly to emphasise the “easy–” prefix. As with the 2000 use, a link was found. In relation to damage, the advertisement of EasyRoommate on a website that also included unrelated adult services, which easyGrou argued were incompatible with the image of the easyGroup, lent a different slant to the situation. Nevertheless, there was no apparent connection between the advertising website and EasyRoommate, and therefore no connection to easyGroup.

Clipped wings

There can be no doubt that, overall, W3 has clipped easyGroup’s wings. The case shows the dangers of picking a non-distinctive and/or descriptive trade mark, and of filing widely where there is no distinctiveness acquired through use. No matter how famous such a mark becomes for particular goods or services, this does not remedy a lack of distinctiveness for all of them.

Adrian Dykes is an Associate at Allen & Overy LLP.

This article was first published in the April 2018 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk