Easygroup Ltd v Easy Live (Services) Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lady Justice Falk,Lord Justice Lewison |
| Judgment Date | 20 December 2023 |
| Neutral Citation | [2023] EWCA Civ 1508 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: CA-2023-000350 |
[2023] EWCA Civ 1508
Lord Justice Lewison
Lord Justice Arnold
and
Lady Justice Falk
Case No: CA-2023-000350
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD)
Sir Anthony Mann
Royal Courts of Justice
Strand, London, WC2A 2LL
Michael Edenborough KC and Stephanie Wickenden (instructed by Edwin Coe LLP) for the Appellant
Chris Aikens (instructed by Hansel Henson Ltd) for the Respondents
Hearing date: 13 December 2023
Approved Judgment
Introduction
This is an appeal by the Claimant (“easyGroup”) with permission granted by Falk LJ against two parts of an order made by Sir Anthony Mann on 9 February 2023. First, he dismissed easyGroup's claim for passing off against the Defendants for the reasons given in his judgment dated 21 December 2022 [2022] EWHC 3327 (Ch). Secondly, he granted a declaration that the use by the Defendants of certain signs did not infringe various trade marks owned by easyGroup, although the use of other signs had infringed certain of those trade marks, for the reasons he gave in an extempore ruling on 30 January 2023.
The facts
Although the judge was faced with a complex dispute, the facts relevant to the appeal can be briefly summarised.
easyGroup is a holding company established by Sir Stelios Haji-Ioannou in August 2000 to be the owner and licensor of all intellectual property rights relating to the various “easy” businesses founded by Sir Stelios, such as easyJet, easyCar, easyMoney and easyProperty. Each of these businesses trades under a brand name consisting of the word “easy” in lower case conjoined with another word only the initial letter of which is capitalised, and they make extensive use of get-up which comprises Cooper Black font and the colours orange (Pantone 021C) and white. Since November 2000 these businesses have operated under licences granted by easyGroup. There is no dispute that, by virtue of the terms of those licences, all the goodwill associated with the licensed indicia generated by those businesses is owned by easyGroup.
easyGroup also owns a large portfolio of registered trade marks, including the eight United Kingdom trade marks and one European Union trade mark listed in Appendix 1 to the judge's judgment. It is unnecessary to set out the details of these trade marks, but they include two registrations of the word EASYJET and two registrations of EASYMONEY, one as a word and the other in logo form. easyGroup says that its trade marks form a “family” of trade marks.
The First Defendant (“ELA”), which trades as Easy Live Auction and variants of that name, has since January 2010 operated an online platform which enables subscribing auction houses to advertise and conduct auctions of chattels. ELA was founded by the Second Defendant, Achilleas Achilleous, and the Third Defendant, Jonathan Burnside, who remain its shareholders and directors. It is common ground that Mr Achilleous and Mr Burnside are jointly liable for any torts committed by ELA.
easyGroup commenced these proceedings in October 2019. The Claim Form complained of the Defendants' use of “the sign EASY LIVE AUCTION” and referred to the Defendants having used “[v]arious stylised versions” of that sign. In easyGroup's Particulars of Claim it was alleged under the heading “The activities complained of” that the Defendants “have provided the aforesaid services under and by reference to the name EASY LIVE AUCTION as follows”, identifying four specific “presentation[s]” of that sign. easyGroup alleged that such uses infringed the trade marks it relied on and amounted to passing off and sought an injunction to restrain the Defendants from “[u]sing the sign Easy Live Auction or any sign colourably similar thereto” or otherwise infringing the trade marks or passing off.
The judge identified the signs complained of in Appendix 2 to his judgment as shown below.
The sign EASY LIVE AUCTION was used from 2010 and the sign EASYLIVEAUCTION or its equivalent (with words elided) was used from (probably) 2014.
| No. | Sign | Date of first use pleaded by Ds |
| 1 |  | around January 2010 |
| 2A |  | May 2010 |
| 2B |  | June 2013 |
| 3 |  | April 2016 |
| 4 |  | March 2019 |
Mr Achilleous proposed the name EASY LIVE AUCTION, and Mr Burnside agreed to it, some time before April 2009. Both men were aware of easyJet at that time. Sign 1 shown above was subsequently designed by Mr Burnside. The judge found that, when the name was chosen and Sign 1 was designed, there was no intention to choose a name or style which was close to, or reflected, or took advantage of any association with, any of easyGroup's brands.
As for Signs 2, 3 and 4, the judge found as follows:
“192. The style of the sign was then changed. The individual words were closed up and the word ‘easy’ lost its capital letter. It was also italicised and emboldened and a font was chosen which, objectively speaking, looks significantly closer to the Cooper Black font which is used by the Easy group. Mr Burnside said that these changes were considered and were deliberate. They were produced as a result of instructions given to an out-of-house graphic designer and then approved. What those instructions were did not emerge from the evidence, but it is not sensible to believe that the designer was just given a free hand. Mr Burnside must have had a significant part in the design process. What he did not say was that these changes were all the idea of a graphic designer.
193. It was put to Mr Burnside that, objectively speaking, those changes brought the logo closer to the various easyJet logos. He did not accept that. I consider that his non-acceptance was a defensive response, anticipating an allegation of copying which he would want to deny, and I consider that his defensiveness was born of nervousness about that denial. It was then put to him that the changes were made in order to get the ELA brand close to the Easy brand, and done to make it more likely that a consumer would call the Easy group logos to mind, and he denied that.
194. Mr Burnside demonstrated that he was aware of other brands and of the benefits of producing parodies (as he called them) in other marketing material. In one piece of such material the claimant set out a comparison table between themselves and other bidding platforms (not fully identified), on which he placed a reference to GoCompare (a version of the name and logo of an insurance price comparison website) and a meerkat (the symbol of another such website). I consider that this reflects his mindset.
195. Having considered this material, and having seen Mr Burnside in the witness box, I do not accept his protestations that he did not intend to bring his branding closer to the Easy group's style. Objectively his sign had moved closer and (as observed above) it gained a small to moderate, but nonetheless significant, amount of similarity. I find that that was intentional on the part of Mr Burnside and he achieved it with the help of his graphic designer.
196. It was put to him that the ® mark was removed in order to get the sign closer still to the Easy logos, but he denied that, and I accept that denial. I also accept his evidence that the hammer was not removed in order to bring a greater closeness. He was further challenged that his use of the colour orange in certain documents deploying the signs was a deliberate allusion to the orange branding of the Easy brands. He denied that, and I accept his denial, not least because looking at the deployments the thought processes involved would be unlikely ever to have occurred to Mr Burnside.
197. However, despite my acceptance of those denials, the fact remains that the original conception of the Sign 2 was to produce something which at least alluded to the Easy branding and the similarities were not accidental. Such as they were, they were intentional and for that purpose.
198. The move to Sign 4 moved away from the Easy group branding by shifting the bold and italicised emphasis to the word ‘Auction’. Although Mr Burnside denied that that occurred because they were worried about the risk that the previous associations presented, I do not accept that. I think it likely that that risk was acknowledged and the change of sign was to remove or reduce the risk of a successful attack by the Easy group. …”
easyGroup's claim for trade mark infringement
The judge held that none of easyGroup's trade marks had been infringed by the Defendants pursuant to section 10(2) of the Trade Marks Act 1994 and the corresponding provisions in the EU Trade Mark Regulation and its predecessors. There is no appeal against that conclusion by easyGroup. The judge also held that the four EASYJET and EASYMONEY trade marks referred to in paragraph 4 above had been infringed by the Defendants' use of Signs 2 and 3, but not by the Defendants' use of Signs 1 or 4, pursuant to section 10(3) of the 1994 Act and the corresponding provisions. There is no appeal by either side against those conclusions, Falk LJ having refused the Defendants permission to appeal against the decision with respect to Signs 2 and 3.
It is nevertheless necessary, for reasons that will appear, to set out two passages of the judge's reasoning concerning section 10(3). The first contains his reasons for finding that the average consumer would make a link between Signs 2 and 3 and the trade marks in question, although not Signs 1 and 4:
“210. If it matters, I do not consider that any link would be created between Sign 1 and any Easy group sign. The only linking factor would be presence of...
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