HARD TIMES FOR EASY FAMILY

KEY POINTS

If a non-distinctive element is the main part of a mark, the court may conclude that there will be no likelihood of confusion, even if use has been prevalent and long-lasting

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The family of marks argued here was linked not to the shared “easy” element, but instead to the use of the white on orange marking and the same font

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The absence of any evidence of any confusion by consumers was a defining factor in the Judge’s decision to rule against a claim under s10(2)

MARKS

easyGroup Ltd (the Claimant) sued Easyfundraising Ltd and three other parties (the Defendants) for infringement of its ‘Easy’ trade marks. The Claimant administers or licenses different companies under the “easy + brand” formula, which it uses to create compound trading names, such as easyHotel and easyRentacar. The Claimant also owns many trade mark registrations for these brand names, which Mr Justice Fancourt identifies, in their most well-known form, to be highly distinctive, due to the orange background and white lettering.

The first Defendant (EFL) is a company trading under the name ‘easyfundraising’. It operates a platform through which members of the public can click through to various retailers’ websites and buy goods or services from them, with a small part of their spending remitted to EFL as commission. EFL will then pass on some of that commission to the charity or good cause that the user has chosen.

Although EFL is not a registered charity or a non-profit organisation, it has passed on donations of over £50m in total to charities and good causes. At the time the decision was argued, EFL was expected to generate a further £6.5m throughout 2024.

The Claimant alleges that the Defendants have infringed nine marks in the following manner:

 1. The first six marks owned by the Claimant are relied on and alleged to have been infringed by EFL’s use of the Defendants’ fourth mark, easysearch, and the fifth mark, @easyuk.

2. The first eight marks owned by the Claimant are alleged to have been infringed by the use of the Defendants’ second mark.

3. All nine marks owned by the Claimant are alleged to have been infringed by the Defendants’ third mark.

The full claims and counterclaims of the parties can be summarised as follows:

1. Under s10(2) and s10(3) and of the Trade Marks Act 1994:

a) infringement of the Claimant’s marks 1, 2, 3, 5 and 6 by use of all of the Defendants’ marks;

b) infringement of the Claimant’s above-mentioned marks by use of the @easyuk handle;

c) infringement of the Claimant’s above-mentioned marks, plus marks 7 and 8, by use of the Defendants’ first three marks; and

d) infringement of the Claimant’s above-mentioned marks, plus mark 9, by use of the Defendants’ first three marks.

2. Claim for invalidity or revocation of first and second Easyfundraising marks.

3. Claim for passing off EFL’s business as being or being associated with that of the Claimant’s licensees.

4. Claim of joint and several liability against Palatine, the fourth Defendant.

The Defendants made a counterclaim for: revocation of the Claimant’s sixth mark (easylife logo) and third mark (easy.com) for non-use; revocation of the Claimant’s second mark (easyHotel/EASYHOTEL) and the seventh mark (EASYJET (2012)) in part only for non-use; and invalidity of the Claimant’s eighth mark (Easy Networks) and ninth mark (easylife).

Family reputation

Mr Justice Fancourt detailed the history and use of the marks in order to assess their reputation, given the claims under s10(3) and provided that the Claimant has argued the “easy + brand” marks form a family of marks. The family of marks relied upon are: easyJet, easyHotel, easy.com, easyGroup and easyMoney.

On the reputation point, the Defendant conceded that: the Claimant’s EASYJET mark had reputation for “airline services” by November 2005; the Claimant’s mark for easyHotel/EASYHOTEL had a reputation for “hotel services and providing hotel accommodation” by September 2015; the Claimant’s mark for easylife had a “reputation for online retail services and retail services conducted by mail order” by June 2022. However, the Claimant was required to provide evidence of reputation in relation to the rest of its marks.

In addition, the Claimant was required to show that the easyJet mark had a reputation for “arranging transportation of passengers and travellers by land”. Mr Justice Fancourt found, based on the evidence submitted, that the Claimant’s mark for easyMoney had reputation for “unsecured and secured personal loans, mortgages, ISAs and other investment funds, deposit accounts, and advice and consultancy relating to those services” by 2009.

It was discussed that the Claimant’s mark for easy.com had a market presence from 2002 and recognition as the portal for all easy+ brands. However, it is unclear whether it had any significant presence as an internet services provider (ISP) until November 2005. It was also discussed that the Claimant’s Easy Networks mark would have had a reputation by 2015, but only to any significant extent among business users of internet access and ISP services, not with individual consumers.

The Judge held that there was an identifiable family of brands, designated by the white on orange marking using Cooper Black font. However, the word EASY was not considered to be an element that identified the marks as a family.

Revocation

In relation to the Defendants’ counterclaim for revocation of four of the Claimant’s marks based on non-use (wholly or in part), the Court did not revoke the easyHotel mark, partially revoked the easyJet mark, wholly revoked the easy.com mark and partially revoked the Easylife mark.

Infringement decision

While considering the similarity between the relevant marks, the Judge ultimately concluded that the element “easy” is a common descriptive adjective in everyday use, and it was not, as of 2005, immediately recognised as originating from a specific undertaking or linking to a specific brand. In relation to these arguments, it was discussed that the distinctive part of the easy+ branding is the colour scheme and particular font and that, without them, there would be little if any visual connection to easyJet. In comparison, the Defendants’ first three marks have been used in distinctive blue and black livery, not as a simple word mark form, which has no similarity to the easy+ trade dress and little similarity to the word mark as registered. Overall, there was low similarity between the respective trade marks.

The Court also held that the @easyuk mark did not infringe any of the Claimant’s marks because there is no identity or similarity between the respective services.

In comparing the relevant goods and services, Mr Justice Fancourt stated that the Defendants do not provide licensing services or support to licensees. They provide advertising and promotional services to retailer clients. Those services are not similar to the goods and services offered by the Claimant (eg hotel services, transport services, administration and management of licensing of goods and services). The average consumer using the easyfundraising platform would not perceive it as being a partner of the retailers on its website, or as having responsibility for the quality of the goods or services purchased. The Judge therefore did not find likelihood of confusion and rejected the allegations under s10(2).

The reputation claim based on the Claimant’s relevant marks was also rejected because the Judge did not find there was a link in the mind of the user of the easyfundraising platform to easyJet or any of the other marks or services provided by the Claimant’s licensees. In addition, the Judge considered the central question to be whether easyJet was so famous, at the relevant times, that any business using the prefix “easy” as part of its name would bring to mind the more famous business, regardless of all other differences. The answer was no, due to the large number of other businesses using the word “easy” and the entirely different context of use for easyfundraising and easysearch.

Passing off

The parties ultimately agreed that the outcome of the claim for passing off would follow the determination of the outcome of the claims for infringement under s10(2), save in relation to the business carried on under the indicium “Easylife”. It was held that people would not assume a business connection between the Defendants’ services and the services for which Easylife (and now the Claimant) owned goodwill, or that the prefix “easy-” signified Easylife. The Defendants’ mark did not misrepresent the origin of their services.

Because the claim against the Defendants failed, the claim against Palatine also failed. However, it was observed that, in light of the decision of the Supreme Court in Lifestyle Equities CV v Ahmed,¹ Palatine could not be an accessory to the Claimant’s infringement as it had no voting control over the board of EFL at the relevant time.

Given that no infringement of the Claimant’s marks by the Defendants nor any passing off were found, the claim for invalidity or revocation of the first and second Easyfundraising marks was dismissed.

Next steps

Ultimately, any of the points on which the claim failed are related to the timing of the case and easyGroup’s activities and reputation/goodwill in its marks in or around 2005. This writer wonders if a different decision might have been reached had the case been based on actions in more recent years and following easyGroup’s move towards licensing of “easy based” IP.

Of course, the decision can be appealed and the Claimant has already stated its intention to do so. It will be interesting to see whether the appeal will ultimately be lodged, given the potential negative press the case could attract for the Claimant. On its website, easyGroup appears to argue that the Defendants wrongly present themselves as a charity, also commenting that the judgment is “erratic”. An appeal won’t be easy: watch this space.

1. [2024] UKSC 17

Milena Velikova is a Chartered Trade Mark Attorney at Lee & Thompson
milenavelikova@leeandthompson.com

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