Easygroup Ltd v Nuclei Ltd
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Bacon |
| Judgment Date | 13 April 2022 |
| Neutral Citation | [2022] EWHC 901 (Ch) |
| Docket Number | Claim No: IL-2019-000050 |
| Court | Chancery Division |
[2022] EWHC 901 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY (ChD)
Rolls Building
Fetter Lane
London, EC4A 1NL
Mrs Justice Bacon
Claim No: IL-2019-000050
Simon Malynicz QC and Stephanie Wickenden (instructed by Stephenson Harwood LLP) for the Claimant
Mark Vanhegan QC and Jaani Riordan (instructed by Mishcon de Reya LLP) for the Defendants
Hearing dates: 7–10, 13–15 December 2021; 4 March 2022; 8 April 2022
Approved Judgment
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Introduction | 4 |
| The parties | 5 |
| Witnesses | 6 |
| easyGroup's witnesses | 6 |
| The Defendants' witnesses | 7 |
| The easyGroup trade marks | 7 |
| Factual background | 9 |
| The Nuclei/Easy Offices business | 9 |
| The easyOffice business | 11 |
| The Croydon easyOffice | 12 |
| Third party agreements | 13 |
| Previous disputes between the parties relating to easyGroup's trade marks | 14 |
| 2001–2003 correspondence and undertakings | 14 |
| The 2007 UK invalidity and revocation actions | 15 |
| The 2008 defamation proceedings | 16 |
| The 2010 UK and EU invalidity actions | 16 |
| Opposition proceedings | 18 |
| Procedural history | 18 |
| The issues | 18 |
| Main legislative provisions | 20 |
| UK trade marks | 20 |
| EU trade marks | 20 |
| Issue (i): Brexit issues | 22 |
| Issue (ii): res judicata | 28 |
| Legal principles: domestic law | 28 |
| The 2007 UK invalidity actions | 31 |
| The 2010 UK invalidity actions | 34 |
| The 2010 EU invalidity action: Article 60(4) EUTMR | 39 |
| The 2010 EU invalidity action: abuse of process under domestic law | 40 |
| Issue (iii): invalidity on grounds of Nuclei's prior rights | 41 |
| Nuclei's goodwill | 41 |
| Whether Nuclei was itself passing off | 43 |
| Misrepresentation | 46 |
| UK528A and EU509 | 48 |
| Issue (iv): invalidity on grounds of bad faith | 50 |
| Legal principles | 50 |
| EU376 | 52 |
| UK528A and EU509 | 53 |
| Issue (v): statutory acquiescence | 54 |
| Issue (vi): revocation for non-use | 54 |
| Legal principles | 55 |
| Application in this case: preliminary comments | 58 |
| The Croydon premises | 58 |
| The Instant Offices arrangement | 60 |
| Use of the trade marks prior to May 2014 | 62 |
| Proper reasons for non-use | 63 |
| Conclusion on revocation | 63 |
| Issue (vii): infringement and honest concurrent use | 64 |
| Section 10(1) TMA/Article 9(2)(a) EUTMR | 64 |
| Section 10(2) TMA/Article 9(2)(b) EUTMR: legal principles | 65 |
| Section 10(2) TMA/Article 9(2)(b) EUTMR: assessment in this case | 69 |
| Issue (viii): other defences to infringement | 72 |
| Non-use | 72 |
| Consent | 73 |
| Laches/acquiescence/estoppel | 73 |
| Issue (ix): joint tortfeasorship | 74 |
| Conclusions | 75 |
Introduction
In these proceedings easyGroup Ltd (“ easyGroup”) claims infringement by the Defendants of easyGroup's UK and EU registered trade marks in the name EASYOFFICE, and the Defendants counterclaim for a declaration of invalidity and/or revocation of easyGroup's marks.
The proceedings are the culmination of a 20-year dispute between easyGroup and one or more of the Defendants over the right to use the signs EASYOFFICE or EASYOFFICES in relation to the provision and brokerage of serviced office space and related services. The dispute has led to proceedings in the UKIPO and EUIPO, appeals to the High Court and the EUIPO Board of Appeal, and defamation proceedings in the High Court.
It is apparent that the dispute between the parties is not merely a commercial dispute, in which easyGroup accuses Nuclei of “stealing our brand”, but also has a significant personal element: Sir Stelios Haji-Ioannou, the founder of easyGroup, believes that he was betrayed by his former friend Mark Dixon, the founder and CEO of the Regus group (now called IWG), when Regus decided to acquire a minority shareholding in Nuclei in 2007 rather than pursuing a joint venture with easyGroup in the market for office space rental.
The dispute now before me has given rise to no less than 35 separate issues set out in the list of issues, plus sub-issues arising under several of those. I was addressed at the main hearing in December 2021 by Mr Malynicz QC and (on the res judicata issue) Ms Wickenden for easyGroup, and by Mr Vanhegan QC for the Defendants.
Two days after the end of the December hearing, the Chancellor of the High Court handed down judgment in the case of easyGroup v Beauty Perfectionists [2021] EWHC 3385 (Ch). During the course of January, I received further written submissions from both parties on the EU issues in light of that judgment. At a further hearing on 4 March 2022 to clarify some of the points made in those written submissions, I was addressed by Ms Wickenden for easyGroup and Mr Riordan for the Defendants. Further written submissions on the same issues were sent to me after that hearing in light of a new European Court judgment handed down on 16 March 2022.
Matters did not, unfortunately, stop there. After circulation of my draft judgment, I received written submissions from both sides, asking me to address a number of further points, putting forward opposing submissions as to the conclusions which they contended I should reach on those issues. In light of those representations, there was a further hearing on 8 April 2022, with submissions made by Mr Malynicz and Ms Wickenden for easyGroup and Mr Vanhegan for the Defendants.
The parties
The Claimant is a holding company established by Sir Stelios Haji-Ioannou in 2000 to be the owner and licensor of all IP rights in and to the various “easy” businesses founded by Sir Stelios, such as easyJet and easyCar. It has been described by Sir Stelios as being the company “which owns and manages the EASY family of brands”. The company was initially incorporated in August 2000 under the name Gregshot Ltd, and changed its name to easyGroup IP Licensing Ltd on 24 October 2000, before being renamed easyGroup Ltd on 22 May 2014.
On 5 November 2000 easyGroup entered into a brand consolidation agreement with a number of companies including easyJet plc, easyEverything Ltd, easyRentacar (UK) Ltd and easyGroup (UK) Ltd, under which those companies would transfer to easyGroup the interests that they held in the intellectual property rights derived from the “easy brand”, in return for which easyGroup would license the relevant rights back to each party. Prior to that agreement easyGroup (UK) Ltd was the company that was used to develop new business ideas and extend the “easy” brand into new sectors. Since the brand consolidation exercise easyGroup has been the applicant for any new trade mark registrations, and has been the holder of all of the registered and unregistered intellectual property rights exploited by easyGroup's licensees.
The Defendant companies are (now) all companies within the IWG group. The first Defendant, “ Nuclei”, is a UK business whose activity is the online advertising or brokerage of serviced office space and related services. It was set up by Jonathan Abrahams in late 1999, and acquired the domain name www.easyoffices.com in February 2000. The Defendants' case is that Nuclei has traded as Easy Offices continuously since around March 2000.
The second Defendant, “ Pathway”, formerly known as Regus No2 Sarl, used to be the intellectual property holding company for the IWG group. It was joined to these proceedings because it was the assignee of two UK trade marks in the name EASYOFFICE (referred to in these proceedings as the “ BAA marks”), and it subsequently applied to invalidate easyGroup's EASYOFFICE trade marks on the basis of one of those marks. The BAA marks were later revoked, and in a corporate restructuring in July 2019 all IWG group intellectual property was transferred to a Swiss company. Pathway therefore no longer holds any assets.
The third Defendant, “ Regus”, is a UK holding company within the IWG group. It acquired the entire shareholding of Nuclei in September 2007. In May 2008 51% of the shareholding of Nuclei was transferred back to Mr Abrahams, leaving Regus with a 49% minority shareholding.
The fourth Defendant, “ IWG”, is the ultimate parent company of the IWG group of companies, and is therefore the parent company of the first to third Defendants.
Witnesses
easyGroup's witnesses
easyGroup's principal witness was Sir Stelios, who is the founder, ultimate beneficial owner and director of easyGroup. He provided a witness statement for these proceedings, and also relied on a previous witness statement given in October 2009 for the purpose of his defamation claim against Mr Dixon and others. When cross-examined Sir Stelios was revealed to be a deeply unimpressive witness. He was argumentative, giving answers that were defensive to the point of implausibility, and repeatedly contradicted points set out in one or other of his witness statements. It was clear that he had a poor recollection of the events that formed the background to these proceedings. It also became evident that his most recent witness statement contained substantial material that (contrary to the requirements of Practice Direction 57AC) was not within Sir Stelios' personal knowledge and recollection, but was instead drafted by his lawyers, giving evidence of points on which Sir Stelios had no clear recollection whatsoever. In those circumstances I unfortunately have to conclude that I can place very little weight on his evidence...
To continue reading
Request your trial
-
Easygroup Ltd v Easy Live (Services) Ltd
... ... All that is logical, and the “first use” date is what was originally pleaded as the relevant date in the claimant's Particulars of Claim ... 122 However, Mr Edenborough says that authority has now developed that position. He relied on Easygroup Ltd v Nuclei Ltd [2022] ETMR 31 in which Bacon J seems to have assumed that the relevant date of assessment was the start of the limitation period in a case in which there was pre-limitation use. She did not propound any reasoning for her approach; she merely stated she was following Arnold J in Walton ... ...
-
Easygroup Ltd v Nuclei Ltd
...FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD) Mrs Justice Bacon [2022] EWHC 901 (Ch) Royal Courts of Justice Strand, London, WC2A 2LL Simon Malynicz KC and Stephanie Wickenden (instructed by Stephenson Harwood LLP) for th......