Easyjet’s claim fails to take flight

5th Mar 2019

Ben Evans explains the role of targeted marketing in this decision. [2018] EWHC 3155 (Ch), EasyGroup Ltd v Easy Fly Express Ltd & Anor, High Court, 21st November 2018.

Easyjet

[2018] EWHC 3155 (Ch), EasyGroup Ltd v Easy Fly Express Ltd & Anor, High Court, 21st November 2018

Key point

  • Online use of a mark by a business/individual based outside the UK will not constitute use for the purposes of bringing infringement proceedings within the UK unless the claimant can demonstrate the specific targeting of UK consumers by the defendant

In this case, EasyGroup Ltd, the proprietor of numerous “easy-” prefixed registered trade marks, including EASYFLIGHTS for various classes, including class 39, was granted permission to serve infringement proceedings against two Defendants located in Bangladesh. The Defendants were Easy Fly Express Ltd (D1) and Mr Saber Chowdury (D2), and the action related to use of the mark EASY FLY within the domain easyfly-express.com and use of a logo including the wording EASY FLY EXPRESS, both in relation to airline cargo services. It was alleged by EasyGroup that D2, as the Chairman of D1, was the guiding mind behind D1.

In September 2017, the Defendants applied to the Court for an order that the English courts did not have jurisdiction to hear the claim or, alternatively, that they should not exercise any jurisdiction that they may have. In considering the Defendants’ application, Mr Justice Arnold referred to the case of AK Investment CJSC v Kyrgyz Mobile Tel Ltd [2011] UKPC 7 and the basic criteria that EasyGroup would be required to establish to serve out of the jurisdiction, namely that: 

  • there is a real prospect of success on the claim; 
  • there is a good arguable case that the claim against the foreign defendant falls within the classes of cases for which leave to serve out of the jurisdiction may be given (often referred to as the gateways); and 
  • in all the circumstances, England is clearly or distinctly the appropriate forum.

Considering whether EasyGroup had a real prospect of success on the claim, Mr Justice Arnold made reference to the commercial reach of the Defendants, the territories to which flights are chartered (Europe did not feature), the type of cargo being transported (primarily “live shrimp fry”) and the small size of the aircraft fleet. Mr Justice Arnold concluded that D1 had never served a European customer and had no intention to do so. 

EasyGroup asserted that because D1’s website and Facebook page were written in English, the business targeted English-speaking consumers. Mr Justice Arnold dismissed this assertion, assessing English as the dominant language of websites generally and a language widely spoken in Bangladesh. In addition, neither D1’s website or its Facebook page made reference to UK or EU contact details, and internet searches brought up the website only when “Bangladesh” was included in the search terms. 

In view of Mr Justice Arnold’s conclusion that the UK and EU consumer had not been targeted, EasyGroup was found to have failed in establishing a real prospect of success, and the Defendants’ application was upheld. 

This decision highlights the need for trade mark owners to tread cautiously when considering the pursuit of a potential infringer for the use of marks online. It cements the position that, no matter the size of a business’s trade mark portfolio and the perceived goodwill associated with the same, a claimant must establish the direct targeting of specific groups of consumers within the jurisdiction in order to succeed with an infringement claim.

Ben Evans is a Chartered Trade Mark Attorney and Senior Associate at Blake Morgan LLP 

Elizabeth Dennis, a Solicitor at Blake Morgan LLP, contributed to this article.

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