United Kingdom

Legal updates: 

• easyGroup alleged that Easy Live’s use of various EASY LIVE signs infringed its EASYLIFE marks; it also sought to invalidate the EASY LIVE AUCTION mark
• Easy Live sought to revoke the EASYLIFE marks, alleging, among other grounds, that the common element ‘easy’ is descriptive
• The court held that there was no real likelihood of confusion as the average consumer would not assume that easyGroup had a monopoly over use of the word ‘easy’

On 4 September 2024 the High Court issued its decision in easyGroup Ltd v Easy Live (Services) Ltd ([2024] EWHC 2282 (Ch)).
 

Background

easyGroup is part of the ‘easy’ group of companies, which owns the easyJet airline and has historically brought actions against third parties using the word ‘easy’ as part of their trading name.

Easy Live provides back-office software for use in the auctioneering trade and an online platform that allows auction houses to broadcast auctions to customers and customers to bid on lots in those auctions in real time.

This was easyGroup's second infringement action against Easy Live and its directors. In the 2019 claim, the court held that EasyLive’s use of the name Easy Live Auction was not an infringement of easyGroup’s various EASY trademarks (eg, EASYGROUP andEASYJET).

easyGroup’s challenge to the EASY LIVE ACTION registration and EASY LIVE signs

The present case concerned Easy Live’s use of the following EASY LIVE signs:
 

easyGroup claimed that Easy Live’s use of these EASY LIVE signs infringed its registrations for the following marks under Section10(2)(b) of the Trademarks Act 1994:

The EASYLIFE stylised mark

easylife Easylife

The EASYLIFE series word mark
 

easyGroup also sought to invalidate Easy Live’s Registration No 3372957 for EASY LIFE AUCTION under Section 47(2) of the acton the basis that it was registered contrary to Section 5(2)(b) – namely, that there was a likelihood of confusion and it wasregistered contrary to Section 5(4)(a) of the act in view of easyGroup's goodwill in the EASYLIFE mark.

Easy Live denied infringement, arguing, among other things, that:

• there was no likelihood of confusion as the common element ('easy') was descriptive and non-distinctive; and
• there had been 12-and-a-half years of honest concurrent use of the EASYLIVE signs and the EASY LIFE AUCTIONregistration with the EASYLIFE stylised mark before the first complaint.

Further, Easy Live sought to revoke the EASYLIFE stylised mark on non-use grounds, claiming that the mark had not been used inthe registered form. It also sought a declaration that the EASYLIFE series word mark was invalid by virtue of the goodwill in theEASYLIVE signs.

Decision

The court held that there was no infringement in relation to easyGroup’s EASYLIFE marks, and dismissed Easy Live’s counterclaimfor a declaration of invalidity in respect of the EASYLIFE series word mark. The court found that the signs used by easyGroup werevariant forms of the EASYLIFE stylised mark and rejected Easy Live’s counterclaim for revocation.

Revocation - EASYLIFE stylised mark

The court held that, although the EASYLIFE stylised mark had not been used in the registered form, the five variant forms belowconstituted genuine use given that they all contained the dominant element ‘easylife’:

As a result, the EASYLIFE stylised mark was not to be revoked in its entirety (which was inconsistent with the easyGroup Ltd vEasyfundraising Ltd decision ([2024] EWHC 2323 (Ch), 11 September 2024), in which the variant forms were not use of theEASYLIFE stylised mark).
 

However, the court also held that, in light of the evidence, the EASYLIFE stylised mark had not been used in relation to "transport;packaging and storage of goods" in Class 39 and some of the “bringing together services”, namely “bringing together a variety ofgoods through a television shopping channel” and “bringing together a variety of goods shopping channel in a wholesale outlet” in Class 35, and would hear further submissions on whether the EASYLIFE stylised mark should be partially revoked.

Infringement under Section 10(2)

The court held that there was no infringement on the following grounds:

1. Similarity of the marks: visually and orally, there was a moderate level of similarity between the EASYLIFE marks and theEASYLIVE signs because the common element ‘easy’ was a simple and descriptive word which could be used by itself or incombination with another word. Conceptually, the court found that the marks conveyed a different message. 
2. Identity or similarity of the services: the services covered by the EASYLIVE signs and EASYLIFE stylised mark were identical or highly similar.
3. Likelihood of confusion: there was no real likelihood of confusion, and any evidence of actual confusion was very limited. While the court was satisfied that the EASYLIFE marks had acquired an enhanced distinctive, it held that the average consumer would not “assume” that easyGroup had a monopoly in the word ‘easy’.

Invalidity of the EASYLIFE series word mark and honest concurrent use

Given there was no likelihood of confusion, the court found that the defence of honest concurrent use was not relevant to the case,and the invalidity claim against the EASYLIFE word mark fell away.

Comment

This case highlights the difficulties that trademark owners may face in trying to claim a monopoly over common or descriptivewords, such as ‘easy’, against third parties as part of their enforcement strategy. Whilst this case turns on its facts, it also serves asa reminder that, although the absence of actual confusion is not fatal, the fewer the examples of actual confusion over a long periodof side-by-side trading, the harder it is to argue likelihood of confusion. It remains to be seen whether easyGroup appeals, but it iscertainly not the last of the ‘easy’ disputes.

This article first appeared in WTR Daily, part of World Trademark Review, in November 2024. For further information, please go to www.worldtrademarkreview.com