Not an "easy" life: the easyGroup's trade mark odyssey continues

On 27 October 2023, the Court of Appeal rejected the appeal of easyGroup Ltd in its claim for infringement of four EU and UK trade marks for "EASYOFFICE" (easyGroup v Nuclei [2023] EWCA Civ 1247).

Nuclei, the Defendant, had been using the "EASYOFFICES" sign for its serviced office space brokerage business since 2000, and the legal battle marked the culmination (presumably) of a nearly two-decade-long dispute, involving invalidity, revocation, and opposition proceedings before the UKIPO and EUIPO, appeals to the High Court, and defamation proceedings against individuals associated with the Regus Group, which acquired Nuclei in 2007.

The background

Nuclei’s business was established in early 2000 and it had been trading under the sign EASYOFFICES in various forms continuously since then. It was common ground that easyGroup knew of Nuclei’s trade since early 2001 but had taken no steps to restrain its use of the EASYOFFICES sign until May 2019.  easyGroup started using "easyOffice" in 2007, having filed trade mark applications in 2002.  It will be noted that Nuclei was the senior user, and that there were several years of co-existence.

The trial judge had dismissed easyGroup's claim for infringement under ss10(1) and 10(2) Trade Marks Act 1994 (“TMA”) and under Articles 9(2)(a) and 9(2)(b) EU Trade Mark Regulation (“EUTMR”), by Nuclei’s use of ‘EASYOFFICES’. Nuclei's counterclaim for revocation for non-use of easyGroup's marks succeeded.  easyGroup had argued its marks had been put to genuine use, although the only evidence of that related to use on a single floor of a single building in Croydon, and as part of a partner arrangement with an online office space directory called Instant Offices.

Nuclei further counterclaimed to invalidate the trade marks based on (i) their own prior goodwill in the "EASYOFFICES" sign and (ii) bad faith. It also presented defences such as honest concurrent use (which succeeded), acquiescence, estoppel, and laches.

On appeal, easyGroup contended that the trial judge had made a number of errors of principle in her assessment of s10(1) infringement, including by failing to treat ‘EASYOFFICES’ as a sign which was identical to ‘EASYOFFICE’ and by failing to construe the specifications of the marks correctly, leading to an erroneous finding of lack of infringement.  easyGroup also contended that the judge had failed to conduct a proper assessment of the likelihood of confusion for s10(2), had been wrong to find honest concurrent use, and had been wrong to dismiss its evidence of use, the latter leading to the erroneous revocation of its marks.

The Court of Appeal (Arnold LJ giving the leading judgment) dismissed the appeal on the following grounds:

• S10(1) TMA requires both the marks and the goods/services to be identical to infringe. The trial judge had found that the "EASYOFFICES" sign and the registered "EASYOFFICE" trade marks were "almost identical", but that the services were not identical.  The Court of Appeal determined that the marks were not identical: there were noticeable differences between the signs, including an extra letter, an additional syllable, and a change from singular to plural form.  After careful consideration of the services in issue, it decided that the services were identical, but that alone was not enough for infringement.
• Infringement under s10(2) TMA requires an identical/similar mark, identical/similar goods/services, and a likelihood of confusion.  The trial judge had considered all the factors and found that there was no likelihood of confusion in relation to some of the marks, and that to the extent there could have been confusion (which was unlikely) for the other marks, "it was such as should be tolerated given the honest concurrent use by Nuclei".   The judge's assessment of the likelihood of confusion was based on the evidence, and the Court of Appeal could only intervene "if she erred in law or in principle".  It considered all the factors and concluded that the judge was entitled to reach the conclusions that she did.  The judge had noted that there was no evidence of actual confusion, which one would expect if there genuinely was a likelihood of confusion in a situation like the current one where there was five years of co-existence, and had correctly treated the absence of that evidence as a factor pointing against a likelihood of confusion, and not as determinative of lack of likelihood of confusion. 
• EasyGroup argued that the judge had been wrong to find honest concurrent use.  The Court of Appeal disagreed, confirming that honest concurrent use is a factor which is considered only where there is a likelihood of confusion.  Furthermore, the Court found that contrary to easyGroup's assertion, Nuclei's use had been honest:  it was the senior user, it had complied with easyGroup's requests in 2001 to move away from using orange in its logo, and easyGroup had not since tried to restrain Nuclei's use until 2019 (notwithstanding the various trade mark registry disputes in the meantime). 
• With respect to revocation for non-use, the genuine use of a trade mark required actual and meaningful use, aimed at preserving the rights granted by the trade mark registration. Such use should align with the primary purpose of a trade mark, must constitute real commercial exploitation of the mark in the relevant market, and be supported by solid and objective evidence. In this case, the judge considered that, considering the appellant's sophistication and overall experience in the industry, it ought to have kept accurate and updated records of its operations – if they existed – and the scant evidence it had provided failed to demonstrate genuine use of the "EASYOFFICE" trade marks during the relevant period.  This was a factual analysis which could only be challenged if the judge had erred in law or in principle, as set out above.  There were no such grounds here and the judge had been entitled to find that there was no genuine use.  Accordingly, the trade marks were revoked

This decision explicitly highlights the necessity for brand owners, especially larger and more sophisticated businesses, to maintain clear, accurate and comprehensive records of trade mark use (and to submit them in evidence) to enforce their rights effectively.

EasyGroup's previous endeavours

The above is only the latest judgment in a long-running series of trade mark actions brought by easyGroup. Indeed, we understand that easyGroup launched no less than 15 trade mark infringement/passing off actions in the UK in 2023, bringing the total number of open UK trade mark actions brought by it to 50 at the time of writing, the earliest of which was issued in 2016. The factual scenarios vary greatly, ranging from the coincidental and/or descriptive use of 'easy' to instances of deliberate or at least reckless replication of elements of easyGroup's branding. 

23 judgments involving easyGroup have been delivered since 2002, with the vast majority commencing in 2016 or later. easyGroup has had mixed success, winning some actions and losing others.  Losses typically involve the revocation or invalidation of its trade marks.

For example, in February 2023, in the case of Easygroup Limited v Easy Live (Services) Limited [2023] E.T.M.R. 12, "easyMoney", "easyProperty", and "Easy Networks", amongst other trade marks, were revoked or partially revoked for non-use in connection with various registered services. While the court held that the defendants' use of the "EASYAUCTIONLIVE" mark did not infringe under s10(2) because there was no significant similarity of services that could lead to consumer confusion, infringement was however established under s10(3) of the TMA. The court found that by choosing a name that referenced the claimant's "easy" brand, the defendants consciously took unfair advantage of the earlier marks, amounting to "free riding" on the reputation and goodwill of the "easy" brand. The court held that the use of the "EASYAUCTIONLIVE" mark was not coincidental but rather intentionally designed to benefit the business.  This decision has been appealed and the Court of Appeal's judgment is expected imminently.

A different result was achieved when, in September 2023, easyGroup filed a claim against the indie band Easy Life for trade mark infringement and passing off, alleging that the band used branding that resembled the easyJet orange logo on posters and merchandise, potentially damaging the airline's reputation through negative publicity. The band announced the claim on social media, and it received significant publicity, in which the band hinted to a forced rebrand to avoid facing a costly legal battle.  This author's view is that whilst the name of the band was arguably not objectionable, the use in marketing material of an image of an easyJet plane which had been doctored to replace 'easyJet' with 'easy Life' was ill advised.

easyGroup and its CEO, Sir Stelios Haji-Ioannou, are vociferous about the cases they bring and their views on "brand thieves" – even a cursory look at their website will easily yield pages of commentary on the topic.  One thing is clear:  use "easy" at your peril – they won't go "easy" on you!

With thanks to co-author, Solicitor Apprentice Andrea Carrera, for his contribution to this article.