Easy peasy trade mark squeezy

Back in mid-January (sorry for the delay in reporting this decision, dear IPKat readers), Mr Justice Arnold handed down his judgment in the long-standing easy trade mark battle: W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7.

The core issue was whether the sign “EasyRoommate” and its variants which were owned by the Claimant, W3, infringed any of the the easyGroup's EU trade marks. Related issues included the validity and revocability of both party’s trade marks, passing off and alleged groundless threats made by the easyGroup to W3. 

First things first, a little background on the case. 

If you have been a student in the past 20 years you probably used the “EasyRoommate” website (or its local variants such as "EasyStanza", "EasyKamer" or "EasyKot") to find shared accommodation (the website was founded in 1999). The Easy brand is arguably better known, principally for the easyJet budget airline. If you have been around European airports in the past 20 years you might have also flown with or noticed the boldly orange-and-white coloured EasyJet airplanes. The easyGroup, founded in 1998, also owns/owned other “easy” services (e.g., easyRentacar; easyHotel; easyProperty). 

The confrontation between the two trade marks wasn't easy to avoid. Back in July 2003 EasyRoommate received the first of many letters of complaint from the easyGroup. During the negotiations that followed, EasyRoommate unilaterally decided to:

1. change the name of its website to “FlatmateWorld”;
2. keep the colour palette and the URL (e.g. in the UK, uk.easyroommate.com); and 
3. add a disclaimer to the website indicating that there was no affiliation with the easyGroup.

EasyRoommate gave a 7-day term to the easyGroup with regards to the change of name or this "temporary gesture" would have expired. The easyGroup never formally accepted these terms. At the end of 2006 W3, which had recently purchased the company, decided to return to the “EasyRoommate” sign. It is to be noted that the easyGroup did not contend that reverting the name back to EasyRoommate amounted to breach of contract.

In 2009, W3 applied to register the stylised logo of EasyRoommate as a UK trade mark in classes 35, 36 and 43. The easyGroup did not oppose the trade mark application and it proceeded to registration. 

In the years that followed, W3 considered changing EasyRoommate’s name but despite the continued threats from easyGroup, ultimately, it never did. The continuing threats made it hard for W3 to sell EasyRoommate. In 2015, W3 issued proceedings against the easyGroup for groundless threats and to invalidate the EASY trade mark, for services of temporary accommodation and advertising, on the basis that it was descriptive pursuant to Article 7(1)(c) of the EU Trade Mark Regulation.  The easyGroup counterclaimed for trade mark infringement and passing off in response.  

1. Validity of  the "EASY" trademark 

Article 7(1)(c) EU Trade Mark Regulation

The "EASY" trade mark was found invalid.

The trade mark itself was descriptive.  As far as acquired distinctiveness was concerned, although the EASY family of trade marks had acquired distinctiveness in Member States where English is spoken or commonly used, the threshold for distinctiveness was set very high and the "EASY" trade mark had not acquired distinctiveness on its own.

2. Infringement of any of the easyGroup trademarks

Article 9(1)(b) and 9(1)(c) EU Trade Mark Regulation

Easy Cat

If the only similarity between the trade mark and the sign complained of is a common element that is descriptive or otherwise of low distinctiveness, that points against there being a likelihood of confusion (Whyte and Mackay Ltd v Origin Wine UK Ltd [2015] EWHC 1271 (Ch), [2015] FSR 33 at [43]-[44]).

Consequently, there was no infringement of any of the easyGroup trade marks. In terms of likelihood of confusion for "advertising" and "temporary accommodation" services, the "Roommate" half of the "EasyRoommate" mark was visually and aurally different to the easyGroup's trade marks plus the evidence on confusion was not conclusive.

As regards the repute of the trade mark there was no evidence to the effect that EasyRoommate would have gained an unfair advantage or benefited in any way to a transfer of image from the easyGroup.

3. Passing off

The claim was dismissed as easyGroup acknowledged that "it was unlikely that its claim for passing off added anything to its claims for trade mark infringement".

4. Validity of W3's UK trade mark

Articles 5(2)(b) and 5(3) 1994 Trade Marks Act

The easyGroup contended that W3's UK trade mark should be declared invalid and that it should have not been registered. Although the mark survived this attack, the scope of the services was restricted from database management, real estate affairs and other broader services under classes 35, 36 and 43 to a few services under classes 35 and 43, including, advertising relating to flatshares and accommodation services.

5. Threats

Section 21 1994 Trade Marks Act (applied before 1 October 2017)

As regards the threats, Justice Arnold essentially held that the threats were not actionable as a reasonable person in the position of W3 would have understood that the threat of proceedings only addressed the services provided by EasyRoommate.

What emerged from this judgement is that the descriptive character of the 'EASY' part of the trade mark, even though the trade marks of the easyGroup themselves had acquired distinctiveness in some countries, set the bar high to fight for infringement and validity, thus putting a high standards for trade mark families in general.

It will be interesting to see whether the judgment will be subject to an appeal and if that will make it any easier on the parties.