Easygroup Ltd v Easyway SBH (a company incorporated under the laws of St Barthelemy)
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell |
| Judgment Date | 22 July 2021 |
| Neutral Citation | [2021] EWHC 2007 (IPEC) |
| Docket Number | Case No: IP-2020-000050 |
| Court | Intellectual Property Enterprise Court |
[2021] EWHC 2007 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
The Rolls Building
7 Rolls Buildings
London, EC4A 1NL
RECORDER Douglas Campbell QC
Case No: IP-2020-000050
Ms. Stephanie Wickenden (instructed by Stephenson Harwood LLP) appeared on behalf of the Claimants.
Ms Beth Collett (instructed by Simmons & Simmons LLP) appeared on behalf of the Defendants
Hearing dates: 5–6 July 2021
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
RECORDER Douglas Campbell QC:
Introduction
This is an action for alleged infringement of four UK registered trade marks owned by the Claimants, and passing off. The First Claimant acts on behalf of the remaining Claimants in matters of brand enforcement. In general it is not necessary to distinguish between them and I will refer to them jointly.
The marks in suit are the following UK registrations:
a) 2 016 785 (word “EASYJET”, filed 5 April 1995, registered inter alia in respect of “transportation of … passengers and travellers by air; arranging of transportation of passengers and travellers by land; airline services; travel agency and tourist office services” in class 39);
b) 2 266 270 (word “EASYCAR”, filed 3 April 2001, registered inter alia in respect of “arranging of transportation of … passengers and travellers by land; … rental and hire of … vehicles” in class 39),
c) 2 313 408A (series of 2 word marks “easyBus” and “EASYBUS”, filed 17 October 2002, registered inter alia in respect of “arranging of transportation of … passengers and travellers by land”), and
d) 2 246 286B (series of 2 word marks “EASYHOTEL” and “easyHotel”, filed 21 September 2000, registered inter alia in respect of “providing hotel accommodation; reservation services for hotel accommodation” in class 42)
The full scope of these registrations is set out at Schedule 1 to the Amended Particulars of Claim, but the aspects identified above are those which are most relevant to the case. Furthermore the Claimants primarily relied on the EASYJET word mark, with the remaining marks being relied upon mainly to support their “family of marks” argument.
The First Defendant was established in 2007 in St Barthelemy (“St Barts”), a small island in the French Caribbean having just under 10 000 residents. Its primary activity is providing an airport “meet and greet” service for visitors to St Barts, but it also books flights and offers accompanying car or boat travel in St Barts. It uses 3 signs: the word “easyway”, the words “easyway SBH”, and a stylised logo as shown below:
The Second Defendant (M. Roche) is the co-founder and owner of the First Defendant. I will refer to “the Defendants” jointly for convenience, without prejudging M. Roche's personal liability.
Both sides drew my attention to other cases involving the same Claimants. Most of these other cases were not relevant, but some of them are and I address those below.
The action was originally commenced in the High Court but was subsequently transferred into this Court by Order of Master Teverson dated 1 April 2020 pursuant to an application by the Defendants. It has been hard fought and a large number of issues remain formally live. I will use the following version of the list:
Trade Mark Infringement
(2) Have the Claimants put the Registered Marks, in relation to the services relied upon by the Claimants and to which the Defendants put the Claimants to proof of use, to genuine use in the five years preceding the date of the claim?
(3) Do the Claimants have a reputation in relation to the Registered Marks?
(4) Are the Signs similar to the Registered Marks?
(5) Are the services of the First Defendant (as nominated by the Claimants) identical or similar to the services of the Registered Marks itemised in the Particulars of Claim?
(6) Are the Registered Marks part of a family of marks and, if so, to what extent can the Claimants rely upon the fact that the Registered Marks are part of a family of marks?
(7) Do the Signs give rise to a likelihood of confusion with the Registered Marks pursuant to s.10(2) of the Act?
(8) Has the First Defendant targeted consumers in the UK?
(9) Do the Signs, without due cause, take unfair advantage of, and/or are they detrimental to the distinctive character and/or repute of, the easyJet Marks pursuant to s.10(3) of the Act?
(10) Is there a defence under s. 11(2) of the Act?
(11) Is there a defence of honest concurrent use?
…
Passing Off
(13) Are the Claimants the owner(s) of UK goodwill in the Registered Marks?
(14) Have the Defendants passed off by making misrepresentations leading the public, or likely to lead the public, to believe that the services of the First Defendant (as nominated by the Claimants) are the services of (or otherwise associated with, approved, authorised or endorsed by) the Claimants?
(15) If so, have the said misrepresentations caused damage?
Joint tortfeasorship
(16) Whether the acts complained of by the Claimants have been committed pursuant to a common design between the First Defendant and Second Defendant or whether the Second Defendant directed and/or procured and/or authorised the complained of acts of the First Defendant.
Other
(17) Is there a limitation defence?
The list is long because the Defendants failed to focus on their best points, namely the issues of “targeting” and “likelihood of confusion”, until the trial itself. This judgment is itself long as a result of the long list. Before considering these issues I will say something about the witnesses.
The witnesses
On behalf of the Claimants I heard oral evidence from Mr Anthony Anderson, former Head of Marketing at the Second Claimant (ie easyJet) and now a consultant to the First Claimant (ie easyGroup); and from Ms Bianca Luxton, the in-house brand protection lawyer of easyGroup. Both were good witnesses.
Mr Anderson is very knowledgeable about the Claimants' marketing generally and is also the author of “easyJet Rising”, 2019, a book that chronicles the early years of easyJet. He gave an extensive account of the use of a range of marks including EASYJET, EASYKIOSK, EASYEXTRAS, EASYCAR, EASYBUS, EASYHOTEL, and EASYCRUISE. Not all of this was within his personal knowledge but such evidence was amply supported by documents and that was a proportionate approach to take in this court.
His evidence was barely challenged in cross-examination. The main point put to him was that easyJet was a low-cost airline. He did not dispute this, although he pointed out that value for money was appreciated by wealthy people as well as those on low budgets.
Ms Luxton's evidence went to various matters which had largely fallen away by the time of trial. She had been to St Barts twice on business, but she accepted that M Roche was more knowledgeable than her about the nature of the tourism industry thereon.
On behalf of the Defendants I heard oral evidence from the Second Defendant, M. Roche who gave evidence via a translator by video link. I reject the Claimants' criticism that his answers in cross-examination were “unfocussed”. Furthermore it was clear to me that M Roche was giving his genuinely held views, and the fact that the Claimants did not agree with his answers is not a reason for criticising him as a witness. I will deal with the substance of his evidence in more detail below.
The issues
I will approach the issues in turn, but grouped by topic.
Genuine use
Issue 2: Have the Claimants put the Registered Marks, in relation to the services relied upon by the Claimants and to which the Defendants put the Claimants to proof of use, to genuine use in the five years preceding the date of the claim?
This would be an attack on validity. The Defendants abandoned their counterclaim by amendment on 8 September 2020. I was told that issue 2 still remained in the case because of a defence under s11A of the Act, but that this was withdrawn by correspondence on 18 June 2021. In these circumstances it was not open to the Defendants to run this attack on validity in their closing submissions and hence issue 2 does not arise. The Claimants did not even know the point was live at all. However the Defendants are still entitled to challenge the extent to which the marks relied upon are entitled to rely on enhanced distinctiveness through use because that is a different point.
Infringement under section 10(2)
Issues 3–8 are all related. I will set out the law first, then deal with the facts relating thereto.
Legal context
Average consumer
The average consumer is a legal construct: see Interflora v Marks & Spencer (No. 5) [2014] EWCA Civ 1403 at [112]–[130], Kitchin LJ. The notion of an average consumer requires the Court to consider any relevant class of consumer, and not to average them: London Taxi v Frazer-Nash [2017] EWCA Civ 1729, at [31], Floyd LJ.
I agree with the Defendants that the average consumer for the purposes of an infringement claim must be a consumer of the goods and/or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign: see Sky plc v SkyKick UK [2018] EWHC 155 at [275]. However the Defendants interpreted this to mean that the average consumer must correspond to their own actual customers. I do not accept this. The average consumer is determined by reference to the goods...
To continue reading
Request your trial
-
Easygroup Ltd v Easy Live (Services) Ltd
...not by reference to the quirks of any individual defendant's business” (per Douglas Campbell QC in easyGroup Ltd v Easyway SBH [2021] EWHC 2007 (IPEC).” (ii) The level of attention and care to be paid is significant. The level of attention displayed by the average consumer is likely to var......
-
Easygroup Ltd v Nuclei Ltd
...at §22 of Compass Publishing v Compass Logistics [2004] EWHC 520 (Ch), [2004] RPC 41. (See also more recently, easyGroup v easyWay [2021] EWHC 2007 (IPEC), §80.) Where reliance is placed on an absence of evidence of confusion, it is therefore necessary to consider the relevance of that i......
-
Decision Nº O/774/21 from Intellectual Property Office - (Trade market), 15 October 2021
...Back Beat Inc, Case BL O/375/10, Mr Iain Purvis QC, sitting as the Appointed Person, noted that: 5 EasyGroup Limited v Easyway SBH [2021] EWHC 2007 (IPEC) 6 Beck, Koller & Company (England) Limited RPC LX1V paragraph 26 20 “16. Although direct confusion and indirect confusion both involve m......