On July 10, 2024, the District Court of The Hague invalidated nine trade marks of the EasyGroup in a case brought against Dutch neobank Bunq. The judgment shows that it is easy to lose a series of trade marks if the common element lacks distinctive character.

What are series trade marks and how to use them

The success of a strong series trade mark, also known as a family of trade marks, is often due to the presence of a distinctive common element.

Although a family of trade marks exist and is generally accepted in the EU, there is no definition of series trade marks to be found in the EUTMR, nor does it specifically provide for the filing of series trade marks. [1] A family of trade marks exists where a number of trade marks (at least three) all share a common element. It is this common element – mostly a prefix or a suffix – that provides the family of trade marks with its distinctive character. An example comes from McDonalds, known for its large portfolio of food and beverage related trade marks. Many of these trade marks share the same, distinctive prefix “Mc”. [2] 

Consistent use of a distinctive prefix or suffix may lead to the public perception that trade marks sharing said common element are a family of trade marks. The public will associate these trade marks with one another, creating the impression that certain goods and services have the same origin. Being part of a family of trade marks, thus enhances the distinctive character of a brand or sub-brand. 

Furthermore, a family of trade marks could be beneficial in opposition proceedings.  It enhances the likelihood of confusion that may follow from a potential association between the contested application and an earlier mark from a family of trade marks. 

The ECJ provided two cumulative requirements for the above to apply in an opposition [3]:

1. Proof of use of all trade marks forming the family of trade marks;
2. Demonstrating an association leading to the public believing that the contested application is part of the family of trade marks.

When these requirements are satisfied, the contested application must be compared to the family of trade marks as a whole, instead of to the trade marks individually. 

What was the EasyGroup v. Bunq case about? 

EasyGroup initiated proceedings against Bunq for using signs to identify different Bunq subscription models, such as “Easy Bank”, “Easy Money”, and “Easy Green”. In the past, Bunq had also used “easyPlans” and “easyTravel”. According to EasyGroup, Bunq infringed the trade marks from EasyGroup’s family of marks starting with “EASY” (the EASY-family). EasyGroup therefore requested an injunction based on thirteen trade marks from the EASY-family. In the counterclaim, Bunq requested the District Court of The Hague to invalidate the trade marks from the EASY-family, arguing that the element “EASY” lacks distinctive character. 

Although an element lacking distinctive character ab initio can obtain distinctive character through intensive use [4], the Court held that the element “EASY” followed by another descriptive term, could not be considered distinctive. According to the Court, the merging of “EASY” with, for example, “HOTEL” or “CAR”, does not result in a different meaning to the when these words are ordinarily combined, given the ordinary English meaning that the combination of the words already have. 

As a result, the trade marks EASYCURRENCY, EASYMONEY, EASYBUS, EASYCAR, EASYCOFFEE, and EASYHOTEL were found to be invalid because they lacked distinctive character for most of the goods and services the trade marks were registered for. The Court did accept that the goods and services in classes 9 (i.a. flat screens) and 39 (i.a. packaging and storage of goods) had distinctive character when the word EASY is used as a prefix in relation to them.

Moreover, the Court found that EASYJET – despite being descriptive of the goods and services it is registered for – had obtained distinctive character through use. 

Since this is a judgment in first instance, EasyGroup can appeal the decision. 

Takeaway

Although series trade marks can be powerful, the EasyGroup v. Bunq case shows that it is insufficient for a trade mark owner to simply have multiple trade mark registrations with a common element. Not only must these trade marks actually form a family of trade marks and be used as a family of trade marks, the public must also perceive it as such. This can only be the case when the common element itself is distinctive or has acquired distinctiveness through use. 

Trade mark owners should therefore actively explore the possibility of using series trade marks as a family of trade marks, and when adopting them, ensure that there is a distinctive element. 

[1]  European Trade Mark Regulation, Regulation (EU) 2017/1001.

[2] McCafé, McChicken, McNugget, McMuffin, McFlurry.

[3] ECJ 23 February 2006, ECLI:EU:T:2006:65 (para. 123-127), as confirmed in ECJ 13 September 2007, ECLI:EU:C:2007:514 (para. 63). See also ECJ 16 June 2011, ECLI:EU:C:2011:405.

[4]  Art. 7 par. 3 and Art. 59 par. 2 EUTMR.