Last month, the High Court dismissed a claim by W3 Ltd ("W3") in respect of threats of trade mark infringement against easyGroup Ltd ("easyGroup") for use of the mark "EasyRoommate". EasyGroup's counterclaim for passing off and infringement of various "EASY" marks was also dismissed and their registered word mark "EASY" was held to be invalid in relation to all of the services it was registered for. For the full case, please see here.
Facts
EasyGroup is the holding company for a number of "easy" companies which span a whole range of goods and services, including the well-known, easyJet airline, easyBus service and easyhotels. EasyGroup holds a large trade mark portfolio for "EASY" prefix marks. In 2000, easyGroup filed an EU trade mark application for the mark, "EASY" which covered advertising and temporary accommodation services.
Since 1999, W3 operated an online property sharing service in the EU, named "EasyRoommate" and later expanded to offer this service to UK consumers. In 2003, easyGroup sent W3 a letter to complain of its use of "EasyRoommate" and in response to this letter, W3 added wording to its website to state that it had no association with easyGroup.
When W3 came to sell its business, it found that it was difficult to do so due to the string of complaints received from easyGroup. W3 therefore applied to register a stylised "EasyRoommate" trade mark in the UK (which was not opposed by easyGroup). In more recent years, W3 also began using this mark with the colours orange and blue:
For many years, the parties engaged in a string of correspondence in respect of the marks and in 2015, W3 finally issued proceedings against easyGroup for groundless threats. In response to this, easyGroup counterclaimed for trade mark infringement due to W3's use of "EasyRoommate" (both the logo and word mark). It also counterclaimed for passing off due to the goodwill that easyGroup had acquired in the word "EASY" through their portfolio of "EASY" marks.
In defence to this counterclaim, W3 argued that the "EASY" marks were invalid as they were descriptive of the goods and services for which they were registered and in response easyGroup argued that the mark had acquired distinctiveness through use.
High Court decision
Both the groundless threats claim and the counterclaim for trade mark infringement were dismissed. The "EASY" mark was held to be invalid for all services for which it was registered; because it was descriptive of the goods and services it was registered for. The court did not accept that the "EASY" marks had acquired distinctiveness through use. Conversely, Arnold J did not find the "EasyRoommate" registration invalid, but ordered that the scope of services it covered should be reduced.
Comment
In dismissing W3's claim for groundless threats, the High Court has provided some practical guidance for trade mark owners to take away from this decision. Trade mark owners should now be able to "threaten" to issue proceedings with a widely drawn undertaking or draft particulars of claim in a pre-action letter without actually widening the threat and being exposed to a threats action. However, it will still be prudent to take care when drafting such letters as the court will take all the circumstances into account.
It should be noted that this decision related to a threat before 1 October 2017 and before the new Intellectual Property (Unjustified Threats) Act 2017 (the "Threats Act") and which we blogged about here. It may therefore hold little weight to show how the judges will interpret threats actions going forward now that the new Threats Act is in force. In the short term, for any threats made before 1 October 2017, this decision will however be useful guidance.
Finally, this case reinstates the high bar that a trade mark owner is required to show when claiming that a mark has acquired distinctiveness. EasyGroup were not able to show that distinctiveness had built up in all EU member states, and therefore the High Court held that the easyGroup EASY mark had not acquired distinctiveness and should therefore be invalidated for all goods and services it was registered for. This will be an unwelcome decision for easyGroup and it remains to be seen if easyGroup seeks to appeal the High Court's decision in the coming months…