Easygroup Ltd v Easy Live (Services) Ltd

Hearing date: 17 June 2025

Approved Judgment

This judgment was handed down remotely at 10.30am on 24 July 2025 by circulation to the parties or their representatives by e-mail and by release to the National Archives.

Introduction

This is an appeal by the Claimant (“easyGroup”) against an order made by Nicholas Caddick KC sitting as a Deputy High Court Judge on 17 September 2024 dismissing easyGroup's claims that (i) the First Defendant (“ELS”) has infringed two trade marks, namely the compound word “easylife” and a stylised mark including that compound word, by the use of various signs, in particular the words EASY LIVE AUCTION, compounds such as “EasyLiveAuction” and logos which include those words, and (ii) a trade mark registered by ELS is invalid. There is also a cross-appeal by the Defendants against the judge's partial dismissal of their counterclaim to revoke one of the trade marks for non-use. The judge's order was made for the reasons he gave in a judgment dated 4 September 2024 [2024] EWHC 2282 (Ch).

I granted permission for both the appeal and the cross-appeal, in part because of inconsistent conclusions with respect to the counterclaim reached by the judge in this case and by Fancourt J in easyGroup Ltd v easyfundraising Ltd [2024] EWHC 2323 (Ch). We heard an appeal by easyGroup against the latter decision immediately after this appeal, and we are giving judgment on both appeals at the same time. On this appeal we had the benefit of submissions from all three counsel.

The judge used a series of defined terms in his judgment which in the interests of consistency I will adopt.

The parties

easyGroup is a holding company established by Sir Stelios Haji-Ioannou in 2000 to be the owner and licensor of all intellectual property rights relating to the various “easy” businesses founded by Sir Stelios, the best-known of which is easyJet. Since 2000 those businesses have operated under licences granted by easyGroup.

ELS operates an online platform via a website located at www.easyliveauction.com (“the Defendants' Website”) which enables auction houses to transmit auctions to customers and enables customers to bid on lots in those auctions in real time. It also supplies back-office software for use by auction houses. The Second and Third Defendants are the directors of ELS. It is common ground that, if ELS has infringed easyGroup's trade marks, the Second and Third Defendants are jointly liable for such infringements. I will therefore follow the judge's example of referring to the Defendants collectively.

This is the second claim which easyGroup has brought against the Defendants for trade mark infringement (and, in the first case, passing off). In the first claim easyGroup ultimately succeeded on some points, but its principal claims failed: [2022] EWHC 3327 (Ch) and [2023] EWCA Civ 1508.

The Easylife Marks

In this claim easyGroup relies upon the two trade marks described below (“the Easylife Marks”).

The first is UK Registered Trade Mark No. 903367695 consisting of the stylised mark shown below (“the Easylife Stylised Mark”) registered with effect from 22 September 2003 in respect of services in Classes 35 and 39.

The Class 39 services are not relied upon by easyGroup. The Class 35 services were helpfully broken down and enumerated by the judge as follows:

“ (a) Advertising services; promotion services; (b)(i) the bringing together, for the benefit of others, of a variety of goods, through a television shopping channel, enabling customers to conveniently view and purchase those goods by means of telecommunications; (b)(ii) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications; (b)(iii) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site; (b)(iv) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a wholesale outlet.”

The second is UK Registered Trade Mark No. 3532904 for the series of two compound words “easylife” and “Easylife” (“the Easylife Word Mark”) registered with effect from 14 September 2020 in respect of services in Class 35 including “advertising and marketing services” and “retail services including on-line retailing, retailing through the medium of broadcasting, retail services conducted by mail order, all connected with the sale of [a wide range of goods]”. (In describing this registration as being of word marks I have adopted the common approach of the parties, as did the judge, although the registration would more accurately be described as being of a series of two minimally-stylised forms of the word EASYLIFE: one all lower case and the other lower case with an initial capital. On the other hand, no-one suggests that the difference between these forms is of any significance, and it is convenient to refer simply to “easylife”.)

The Easylife Marks were previously owned by Easylife Holdings Ltd (in the case of the Easylife Stylised Mark) and its subsidiary Easylife Ltd (in the case of the Easylife Word Mark). Since around 2000, these companies (collectively “Easylife”) have operated a general merchandise catalogue retail business under the name “easylife”. They did so initially by mail order, and shortly thereafter online as well. Since 2005 they have also provided a service advertising third parties' products by means of loose paper inserts placed within Easylife catalogues (“Easylife's Insert Service”).

Like the Defendants, Easylife were also the target of a claim by easyGroup. That claim was dismissed: [2021] EWHC 2150 (Ch). On 21 July 2022, after easyGroup had obtained permission to appeal against that decision, easyGroup and Easylife entered into a settlement agreement whereby the Easylife Marks were assigned to easyGroup, but Easylife were allowed to continue using them as a licensee of easyGroup. In consequence, easyGroup's principal witness at the trial of this claim was Gregory Caplan, Easylife's founder and sole director. Robert Wise and James Oakenfold of Easylife also gave evidence, as did Chrys Chrysostomou of a company called Direct Response Marketing Group Ltd which works with Easylife. The latter three witnesses also gave evidence in the easyfundraising case.

The Defendants' Signs

easyGroup alleges that the Defendants have infringed one or both of the Easylife Marks by use of the following signs (“the Defendants' Signs”):

i) EASY LIVE, particularly in the forms “easy live” and “Easy Live”;

ii) EASY LIVE (SERVICES) LTD;

iii) EASY LIVE AUCTION, particularly in the forms “EasyLiveAuction” and “EasyLiveAuction.com”; and

iv) The logos shown below (“the Easy Emphasised Logo” and “the Auction Emphasised logo” respectively).

The Defendants' Mark

ELS is the proprietor of UK Registered Trade Mark No. 3372957 registered with effect from 5 February 2019 for the series of word marks EASY LIVE AUCTION and EASYLIVEAUCTION for a range of goods and services in Classes 9, 38 and 42 (“the Defendants' Mark”).

The issues in broad outline

easyGroup contends that the Defendants have infringed the Easylife Marks pursuant to section 10(2) of the Trade Marks 1994 because there is a likelihood of confusion between the Defendants' Signs and the Easylife Marks. easyGroup also contends that the Defendants' Mark is invalidly registered by virtue of section 5(2) because there is a likelihood of confusion between the Defendants' Mark and the Easylife Marks. It is common ground that the infringement claim and the invalidity claim stand or fall together, and accordingly attention may be confined to the infringement claim. The Defendants deny infringement and counterclaim for revocation of the Easylife Stylised Mark on the ground of non-use.

The legislative framework

Section 10(2) of the 1994 Act implemented successive European Union Directives culminating in Article 10(2)(b) of European Parliament and Council Directive 2015/2436/EU of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast). Parallel provisions are contained in Article 9(2)(b) of European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 on the European Union trade mark (codification).

These provisions provide that the proprietor of a registered trade mark is entitled to prevent third parties from using a sign in the course of trade without the proprietor's consent if the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered and there exists a likelihood of confusion on the part of the public. Save for likelihood of confusion, it is common ground that all of the requirements for infringement under section 10(2) are satisfied in this case.

Similarly, section 5(2)...