The High Court has dismissed claims for passing off and infringement of trade marks containing the prefix "easy".
Background
Signs are unacceptable for registration as a trade mark if they lack distinctive character (Article 7(1)(c), EU Trade Mark Regulation (207/2009/EC), now Regulation 2017/1001/EU) (EUTM Regulation) (Article 7(1)(c)). A trade mark will not be refused registration if, before the date of application for registration, it has acquired a distinctive character as a result of use.
A registered trade mark owner of an EU trade mark (EUTM) has the right to prevent unauthorised third parties from using, in the course of trade, an:
Facts
E has a large portfolio of trade marks containing the prefix "easy" for a variety of goods and services. In 2000, E applied to register the mark EASY for advertising and temporary accommodation services.
Since 1995, W has used the name "EasyRent" for residential letting agency services, and has used "EasyRoommate" for online property-sharing services since 1999. In 2000, the EasyRoommate website's services were extended to UK customers.
In 2003, E complained so W added the disclaimer "We are not associated with the easyGroup" to its website. W briefly changed its name to "Flatmateworld", but soon reverted to "EasyRoommate".
In 2007, W obtained the stylised word mark EASYROOMMATE as a UK trade mark with no opposition from E. From 2009, W also used a logo form of "EasyRoommate".
W issued proceedings for groundless threats against E.
E counterclaimed for infringement arising from W's use of the EASYROOMMATE word mark and logo and European equivalents used by W in other EU member states. E also counterclaimed for passing off, relying on goodwill acquired in its family of "easy" trade marks since the EasyJet airline was set up in 1995, and on a large portfolio of EU-registered marks such as EASYJET, EASYCAR and EASYEVERYTHING.
W argued that the EASY trade mark was invalid because it was descriptive within the meaning of Article 7(1)(c).
E argued that the EASY trade mark had acquired distinctive character through use.
Decision
The court held that the use of the EasyRoommate word mark and logo did not infringe E's marks.
The EASY trade mark was descriptive in that it denoted a quality or characteristic of the services, that the services were easy to buy or use: the advertising was easy to place, and the temporary accommodation was easy to book. E had to show that the mark had acquired sufficient distinctiveness in all EU member states in which it was descriptive, including countries where English was widely spoken. E had shown use of a number of its trade marks, such as EASYJET and EASYHOTEL, in relation to the relevant services, but not use of EASY.COM or EASY. Although the public had come to associate signs consisting of the prefix "easy" and another word with an upper case first letter, white on orange, in the relevant font, with E, it did not follow that they would have the same reaction to the word "easy" on its own in any font or colour. There was no evidence that consumers tended to shorten E's trade marks to "easy" alone. Overall, the evidence did not establish that EASY had acquired a distinctive character in relation to advertising or temporary accommodation. So the EASY trade mark was invalidly registered for these services.
As to infringement under Article 9(1)(b) there was no evidence of actual or likelihood of confusion. The trade marks E relied on had not acquired distinctive character through use. EASY was not the distinctive and dominant component of E's EUTMs, and they did not form part of a family of marks at the relevant time, since there was insufficient use. The "Roommate" part of W's marks was also visually, aurally and conceptually different to each of E's marks.
As to infringement under Article 9(1)(c), E had not established a reputation in any of the marks other than EASYJET. Although for a significant proportion of consumers, W's marks would call the EASYJET mark to mind, there was no evidence of detriment to the mark's distinctive character by way of a change in consumers' economic behaviour, nor to its repute. E's case on unfair advantage was strongest, but the EASYJET mark had no reputation in 2000 for anything other than airline services and there had been only minimal use of the other "easy" marks. W would not have benefited from any transfer of image from EASYJET, nor gained any unfair advantage.
Article 9(1)(c) infringement in relation to the EasyRoommate logo was assessed at June 2009. By then, E's family of brands including EASYJET and EASYHOTEL was better known among the public. Due to the accentuation of "easy" in the logo, and its use of orange, a significant proportion of consumers would make a link between the parties' brands. Although there was some evidence of free-riding, and the "easy" brand was very valuable, this head of claim was rejected. E did not extend into property until 2014.
The court dismissed the threats claim. A reasonable person would not interpret E's letters, even combined with draft undertakings and particulars of claim, as threatening wider proceedings, but would understand that the threat of proceedings related solely to W's provision of services and so were outside the threats regime.
Comment
The outcome of the proceedings was heavily dependent on the timeline relating to the building up of goodwill and the registration of marks. Despite E's extensive use of "easy" brands, it is notable that the EASY mark itself was found not to have acquired distinctiveness. The test sets a high bar in that this distinctiveness must be shown to have been built up in all member states. One option for an EUTM owner whose mark is declared invalid based on a situation relating only to certain member states, such as a word being descriptive in a particular language, would be to convert its mark into separate national trade mark registrations in other member states.
Case: W3 Ltd v easyGroup Ltd and another [2018] EWC 7 (Ch).
First published in the March 2018 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.
