An easyPeasy update on Trademarks and Passing Off

Posted by Jack Hobbs

14-03-2018

The High Court of Justice has dismissed a claim of threats of trademark infringement against easyGroup Limited. The easyGroup empire is known far and wide for its range of orange themed companies which all use their ‘easy’ prefix, the most renowned of all being easyJet.

The hearing of W3 Limited v easyGroup Limited and another [2018] EWC7 (Ch) concerned W3’s, long complained of, perceived trademark infringement of easyGroup’s ‘easy’ prefix. The Claimant in the action has offered its services as a roommate finder allowing people to find properties to share under the name EasyRoommate since the end of the 20th century. The use of this has been complained of by easyGroup since 2003 with numerous threats of action being made. The weight of this threat alone was enough to make it difficult in 2007, for W3 to find a buyer of its business.

The purpose of the proceedings brought by W3 was to obtain a cessation of the groundless threats of infringement being brought by easyGroup and to satisfy its investors that this is not a potential liability. A counterclaim was entered claiming trademark infringement against the EASYROOMMATE word mark and logo as well as against its European equivalents such as the Dutch ‘EasyKamer’ mark. It also claimed for passing off based on the goodwill in the ‘easy’ trademarks.

Passing off is not as well referred to as trademark infringement. Passing off is about stopping the infringer from selling their goods or services by making unfair use of another’s reputation. This concept was made famous by Asda selling their ‘Puffin Bar’ in a packaging and style very similar to that of McVitie’s ‘Penguin Bar’, which caused customers to be confused as to the true source of the product.

Subsequently to the counterclaim, W3 took the advice of all of the Intellectual Property Lecturers I have ever come across; that the best way to defend an infringement claim is to attack the validity of the original granted right. In essence, the best form of defence is attack. They argued that easyGroup’s classic ‘easy’ trademark was descriptive within the meaning of Article 7(1)(c) of the EU Trade Mark Regulation.

The case was heard before Mr Justice Arnold who dismissed easyGroup’s counterclaim as well as W3’s threats claim. The validity of easyGroup’s ‘easy’ UK trademark was questioned and was found to be invalidly registered in relation to the relevant services. It was found that despite easyGroup using easy in many of its trademarks such as easyJet and easyGym it does not use the word ‘easy’ in isolation.

The counterclaim brought by easyGroup ultimately led to its downfall in respect of its lost rights as a result of the litigation. This ruling does not mean however that we are going to see companies emerging who will transport people from London to Europe for small fees called easyAir and easyPlane. The other trademarks owned, such as easyJet, still remain protected by the intellectual property rights adopted to them.


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