Easygroup Ltd v Easy Live (Services) Ltd
| Jurisdiction | England & Wales |
| Judge | Sir Anthony Mann |
| Judgment Date | 21 December 2022 |
| Neutral Citation | [2022] EWHC 3327 (Ch) |
| Docket Number | Case No: IL-2019-000120 |
| Court | Chancery Division |
[2022] EWHC 3327 (Ch)
Sir Anthony Mann
Case No: IL-2019-000120
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Michael Edenborough KC and Stephanie Wickenden (instructed by Edwin Coe LLP) for the Claimant
Chris Aikens (instructed by Hansel Henson) for the Defendants
Hearing dates: 5 th, 6 th, 7 th, 12 th & 13 th October 2022
Approved Judgment
This Judgment was handed down remotely at 10.30 am on Wednesday 21 st December 2022 by circulation to the parties or their representatives by email and by release to the National Archives.
Introduction
This is a trade mark and passing off dispute between the owners of certain marks (the claimant) and those alleged to have infringed (the first defendant as the infringer and its two directors, the second and third defendants, who are sued as joint tortfeasors). The claimant brings the infringement claim and seeks a declaration of invalidity of a mark registered by the first defendant. I shall call the first defendant “ELA” and the claimant “Easygroup”. Part of ELA's response is to seek certain revocations of the specifications of some of the claimant's marks. The result of this, the nature of the business of the group of which Easygroup forms part and the number of marks relied on means that there are a number of interlocking factual matters applicable to various aspects of the case.
Easygroup also brings a passing off claim. Mr Edenborough KC, leading counsel for Easygroup, accepted that in the main the passing off claim added nothing to the claims. If he won on his trade marks he did not need it. If he lost then, by and large, and depending on the issues involved, his passing off claim would not save him, though there were one or two wrinkles in the analysis in which might need his passing off claim. In the light of that I shall not dwell on the claim save insofar as might be necessary.
Mr Aikens, for the defendants, accepted that if ELA was liable then the other two defendants were similarly liable and he did not seek to suggest that they could escape the same liability as their company, for the purposes of this action. As a result I do not have to consider their positions separately and can focus on the position of ELA.
At my request counsel reduced the number of their favoured case citations to an agreed statement of law, where agreement was possible, to avoid excessive citation of different authorities saying the same thing in different terms. I am grateful to them for their achievements in this respect.
The parties
The claimant is a member of the well-known “Easy” group of companies founded by Sir Stelios Haji-Ioannou. The best known entity is probably the airline business easyJet, but there is and has been a number of other companies and businesses of various levels of longevity, including easyCar, easyBus, easyEverything (later easyInternetcafé), easyHotel and easyMoney. The easy brand is central to this overall business and where expressed in stylised fashion is expressed as a prefix to a conjoined word alluding to the activity of the business. The group has taken many steps to try to protect it from others trading with “Easy” in their name, but not against every such business. This action is one of those enforcement steps.
Easygroup is the holder of relevant trade marks. The title to the action expresses Easygroup as “acting on its own behalf and as representative of the companies in the EASY group which use the EASY brand”. It is on that basis that it claims to be able to bring the passing-off claim. The widespread use of the “Easy” brand across a range of businesses across a period of time going back to the 1990s gives rise to “family of marks” points in this case. Further details of the group are referred to below.
The first defendant is a company incorporated by the second defendant (Mr Achilleous) and the third defendant (Mr Burnside) to develop and market software and other services for the auctioneering trade. There are three key elements of that business. The first is a sort of online marketplace which can be visited by members of the public and which presents a gateway to subscribing auctioneers of chattels — those auctioneers do not offer real estate auctions via anything to do with ELA. The catalogue of subscribing auctioneers is mirrored by ELA and the wares presented to the bidding public. The selling auction-house is identified there, and ELA has its own branding on the site, including the signs complained of in this action. When an auction goes live a bidding purchaser can bid there, via the second and third elements.
In addition to this activity is a variant on the part of ELA, in which it advertises forthcoming auctions and refers would-be bidders to the auction house's website without itself hosting the catalogue and bidding features.
Second is the live auction element. ELA operates software (operating through websites) allowing an auction house to conduct a live auction on-line. Bidders can join in on line and place bids by pressing buttons on-screen, all in real time. This software operates through ELA's site if a bidder enters in that way, and it is also used to power online auctions for auctioneers operating through their own sites without any fronting by ELA. In that latter instance ELA may or may not be identified as the provider of the software (by such designations as “Powered by …”) but where it is made the reference is hardly noticeable. These are known as “white label” sites. As far as a bidder is concerned he/she will apparently just be dealing with the auctioneer and will know nothing of ELA's underlying software (unless there is a reference to it on the website, which, if there is, will only be slight).
The third element is an integrated back-office function for auctioneers (integrated with the bidding side) which operates once an auction is concluded with a successful bid. This deals with all the paperwork and payment consequences of the successful bid, such as billing, recording and receipt and payment of commission.
I received a fuller description of those activities but do not need to develop the detail here. An auctioneer can choose the service it wants. If it opts for the bidding software it can either incorporate it under its own website (so that it runs the bidding side with ELA's software operating “below the surface” of the auctioneer's website, the “white label” version, as described above) or it can be run through the ELA front end which presents the catalogue and bidding opportunity through its own front end, identifying itself as providing the “marketplace” but also identifying the relevant auctioneer as the actual auctioning entity. The auctioneer may or may not wish to use ELA's back-office product.
The claimant's marks sued on
The claimant's marks and the categories of services relied on appear in Appendix 1 to this judgment. This Appendix sets out only the services within the classes which are relied on in this action in some way or another. Some of the services are highlighted in grey/yellow. Those highlighted are the services which are said to be identical or similar to the services offered by the defendants under the offending signs, and they are also the services which are the subject of the revocation counterclaim brought by the defendants on the basis of non-use. Some of the marks have coloured elements; the Appendix seeks to indicate where there is colouring in order to clarify matters where a print of this judgment is in black and white only. The narrative hitherto will reveal that it looks odd that some of the services, mainly those under the easyJet marks, are relevant to this action when it is perfectly plain that the defendants do not provide them, but they are in fact relevant to an infringement claim under Trade Marks Act 1994 section 10(3) (unfair advantage).
Those marks, and the evidence, reveal that it is an important part of the claimant's branding that in its stylised form the brand name starts with a lower case “e” and then has an uppercase letter in the part of the brand which alludes to the services. Where this judgment refers to those marks or brands it attempts to reproduce that format.
The column “Type of infringement alleged” refers to sections of the Trade Marks Act 1994.
The offending signs
The signs of which complaint is made appear in Appendix 2 to this judgment, together with the dates from which they are said to have been used. For the purposes of identification hereafter the device signs are given numbers which I will use when referring to them individually. They are all presented as white text on a blue background. There were some instances in the papers where there seems to have been a different colour (usually green) but it was never orange, unlike the Easy group's principal branding. Their development is dealt with below in the context of dealing with the claims and defences.
The two text signs (EASY LIVE AUCTION and EASYLIVEAUCTION in upper and lower case forms) did not feature much in the case. Most of the emphasis was on the stylised versions. They add little to the claims based on the stylised signs, and it will not be necessary to refer to them much.
Relevant parts of the history of these proceedings
The claim form in this case was issued on 8th October 2019. The claim was originally based on 24 registered trade marks and relied on a very large number of different goods and services in the specifications. By a process of dispute and agreement over time the marks in suit were narrowed to the marks and...
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Easygroup Ltd v Easy Live (Services) Ltd
...FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD) Sir Anthony Mann [2022] EWHC 3327 (Ch) Royal Courts of Justice Strand, London, WC2A 2LL Michael Edenborough KC and Stephanie Wickenden (instructed by Edwin Coe LLP) for the Ch......