Easygroup Ltd v Easyfundraising Ltd

Hearing dates: 14, 17, 18, 21, 24 June 2024

Approved Judgment

This judgment was handed down remotely at 10.30am on Wednesday 11 September 2024 by circulation to the parties or their representatives by e-mail and by release to the National Archives

Contents

Introduction

The Claimant is a company controlled by Sir Stelios Haji-Ioannou (“Sir Stelios”), which administers or licenses various companies that trade under the “easy+ brand”, such as easyJet, which is the largest and perhaps the best known of them.

By “easy+ brand” I mean businesses administered or licensed by the Claimant that use a compound trading name, comprising the prefix “easy” (all lower case) followed without a space by a word (starting with a capital letter) that identifies or relates to the field of operation of the company ( e.g. easyHotel, easyRentacar).

The Claimant owns a large number of registered trade marks for the brand names. It has sued the Defendants principally for infringement of some of those marks.

In their most well-known form, the marks are highly distinctive (pantone 021C orange background and white lettering in Cooper Black font: see the example of the Claimant's own trade mark at [17] below), but not all the marks are coloured and some are word marks of relatively low distinctiveness. There are 9 different trade marks that the Claimant alleges have been infringed. The Claimant also brings a passing off claim in relation to the goodwill of each of the licensees, including in relation to Easylife, which became one of the Claimant's brands only in 2022.

The First Defendant (“EFL”) is a company founded in about 2003 by the Third Defendant, Mr Woodroffe, which operates a website ( www.easyfundraising.org.uk). This is a platform for members of the public (“supporters”) to use to click through to various retailers' websites and then buy goods or services from them. There are now thousands of retailers or providers (“retailers”) who advertise on or participate in the platform, with links to their own websites. The supporters use the platform with the knowledge and intention that a small part of their total spend will then be remitted by each retailer to EFL (“the commission”), which in turn then passes on some of that commission to the charity or good cause that the supporter has registered on the plaform as their chosen cause.

In about November 2005, the First Defendant started to trade using the sign “easyfundraising” in the following form:

It changed its trading sign in September 2015, as follows:

and again in June 2022 to this:

All 3 signs, which I will refer to as “the EF Sign”, the “2015 EF Sign” and the “2022 EF Sign” and the plain word sign EASYFUNDRAISING (collectively, “the Signs”) are alleged to have infringed various of the Claimant's marks from the respective dates when they were first used.

There is also a different sign, easysearch, which EFL started to use in May 2007 in the following format, as and in connection with an online search engine:

and from September 2009 EFL started to use the handle @easyuk on social media. These too, and the plain word sign EASYSEARCH, are alleged to have infringed the same marks owned by the Claimant.

EFL is not a registered charity or a not-for-profit organisation. Nor does it pass on all the commission to registered charities. It is a business and retains about 50% of the commissions paid by advertisers and the entirety of further income that it receives for advertisements on its website, or other promotional material.

Nevertheless, since its inception, EFL has been able to pass on donations of over £50 million to charities and other good causes, and is expected to generate a further £6.5 million of donations in 2024.

In the interests of even-handedness, it is appropriate to note that the Claimant also passes on (less visibly) substantial sums to a charitable foundation chaired by Sir Stelios. For the year 2023, this amounted to £15.4 million and in 2022 £10.5 million. One difference between the respective donations is in the character of non-charitable good causes that EFL supports, which the Claimant does not. I will return to that later in connection with the allegations of damage to reputation that the Claimant makes. Another difference is that Sir Stelios and his foundation decide which charities benefit from the Claimant's donations, whereas the supporters decide which good causes or charities benefit from the commissions paid by retailers.

The Second Defendant is a company that owns the shares in the First Defendant, but is otherwise of no significance for the issues to be decided in this case.

It is accepted for the purposes of this case that the Second Defendant and Mr Woodroffe will be jointly and severally liable for any infringement (or passing off) that the Claimant proves.

The Fourth Defendant (“Palatine”) is a private equity firm, which manages (among others) two funds that first invested in the First Defendant in 2020. The Claimant alleges that Palatine is jointly and severally liable for the First Defendant's torts, but Palatine denies any such liability on the basis that it has no control over EFL's activities and did not direct them.

The Trade Marks

The Claimant relies on 9 different registered trade marks in this claim.

The following marks were registered before November 2005, which is the time of the first infringement alleged by reference to use of the EF Sign:

1. EASYJET (class 39 – broadly transport, vacations, travel, and tourism: the exact specification does not matter in this case) (No. UK2016785) (“the first easyJet mark”);

2. easyHotel / EASYHOTEL (class 42 – “hotel services; providing hotel accommodation; reservation services for hotel accommodation”) (No. UK2246286B);

3. easy.com (class 38 – “electronic mail services”) (No. UK2247942);

(class 36 – broadly financial services, and the exact terms of the specification do not matter) (No. UK2265184);

5.

(class 35 – “the commercial administration and management of the licensing of goods or services, including the administration and management of brand licences; the provision of general support, marketing, advertising, administration and management services to licensees of goods or services”) (No. UK2294415);

6.

(Class 35 – “advertising services; promotion services; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase these goods from a general merchandise catalogue by mail order or by means of telecommunications; 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”) (No. UK903367695) (“the first easylife mark”).

The Easylife business was not in fact controlled or licensed by the Claimant, nor was it a part of the easy+ brand, at this time: the name and sign had been used by another company, Easylife Ltd, since 2000, and control of the brand was only acquired by the Claimant in July 2022, in...