Easygroup Ltd v Nuclei Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Nugee,Sir Christopher Floyd |
| Judgment Date | 27 October 2023 |
| Neutral Citation | [2023] EWCA Civ 1247 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: CA-2023-000868 |
[2023] EWCA Civ 1247
Lord Justice Arnold
Lord Justice Nugee
and
Sir Christopher Floyd
Case No: CA-2023-000868
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)
Mrs Justice Bacon
Royal Courts of Justice
Strand, London, WC2A 2LL
Simon Malynicz KC and Stephanie Wickenden (instructed by Stephenson Harwood LLP) for the Appellant
Mark Vanhegan KC and Jaani Riordan (instructed by Mishcon de Reya LLP) for the Respondents
Hearing dates: 10–11 October 2023
Approved Judgment
Introduction
The Claimant (“easyGroup”) appealed against an order of Bacon J dated 25 April 2022 dismissing easyGroup's claim that the Defendants had infringed four trade marks owned by easyGroup consisting of or comprising the word EASYOFFICE by the use of signs consisting of or comprising the word EASYOFFICES, and revoking those trade marks for non-use, for the reasons given in her judgment dated 13 April 2022 [2022] EWHC 901 (Ch). At the conclusion of the argument on the appeal the Court announced that the appeal would be dismissed for reasons to be given later, with the order to take effect when the reasoned judgment was handed down. That made it unnecessary for the Court to hear argument on two respondents' notices served by the Defendants, which included a contingent application for permission to cross-appeal in respect of counterclaims for declarations of invalidity which the judge had dismissed. My reasons for agreeing to that disposition of the appeal are as follows.
The judge was faced with a dispute of remarkable complexity as a result of a history extending back to the year 2000, and she had to determine a large number of issues. Although the issues raised by the appeal lie within a relatively narrow compass, and some of the history is only directly relevant to other issues, much of it has some relevance to the appeal. The account set out below is an abbreviated and slightly reorganised version of that set out by the judge.
It is common ground that none of the issues arising on the appeal, which concern a claim commenced before the United Kingdom left the European Union, and events well before that, are affected by Brexit.
The parties
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 and easyCar. Since November 2000 those businesses have operated under licences granted by easyGroup.
The Defendants are now all members of the IWG group of companies.
The First Defendant (“Nuclei”) was set up by Jonathan Abrahams in late 1999, acquired the domain name www.easyoffices.com in February 2000 and has traded successively as “Easyoffices”, “easy offices”, “easyoffices” and “EasyOffices” since around May 2000. The judge described Nuclei's business at [9] as “the online advertising or brokerage of serviced office space and related services”.
The Second Defendant (“Pathway”) used to be the intellectual property holding company for the IWG group. Pathway was the assignee of two UK trade marks referred to in these proceedings as “the BAA marks”, and in 2010 it applied to invalidate easyGroup's trade marks on the basis of one of those marks. As part of a corporate restructuring in July 2019 all the IWG group's intellectual property was transferred to a Swiss company.
The Third Defendant (“Regus”) is a 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 (albeit with no right to receive dividends and subject to a repurchase option in Regus' favour), leaving Regus with a 49% minority shareholding.
The Fourth Defendant (“IWG”) is the ultimate parent company of the IWG group, and is therefore the parent of Nuclei, Pathway and Regus.
The judge held that, if Nuclei had infringed any of easyGroup's trade marks, Pathway, Regus and IWG would be jointly liable for such infringements. The Defendants do not challenge that conclusion.
The Trade Marks
One of the four trade marks originally relied upon by easyGroup is no longer relied on and may therefore be ignored. The remaining trade marks (“the Trade Marks”) are as follows:
i) United Kingdom Trade Mark No. 2313528A (“UK528A”) applied for on 18 October 2002 in respect of (inter alia) “hire of temporary office space” in Class 43. This is a series registration of four marks: the word EASYOFFICE,, “easyOffice” and the two devices shown below.
ii) European Union Trade Mark No. 2907509 (“EU509”) for the word EASYOFFICE applied for on 18 October 2002 in respect of (inter alia) “rental of offices” in Class 36 and “hire of temporary office space” in Class 43.
iii) European Union Trade Mark No. 11624376 (“EU376”) for the figurative mark shown below applied for on 4 March 2013 in respect of (inter alia) “rental of offices” and “rental of office space” in Class 36 and “hire of temporary office space” and “information, advisory and consultancy services for all the aforesaid services” in Class 43.
Signs used by Nuclei
There is no dispute that, prior to about November 2000 and since January 2005, Nuclei has used the sign EASYOFFICES. From about November 2000 to January 2005 it used the sign EASY OFFICES, but neither side suggested that this should be regarded as different.
To begin with, Nuclei used a logo designed by Mr Abrahams. From about November 2000 to April 2001 Nuclei used the logo and corporate livery illustrated below.
Following correspondence with easyGroup discussed below, from April 2001 to January 2005 Nuclei used the logo and corporate livery illustrated below.
Since January 2005 Nuclei has used the logos shown below.
The factual background
Nuclei's business
Nuclei's business has always been primarily an online business, supported by a call centre. Nuclei's revenue was £14,147 in the year ending 30 November 2000, £274,248 in the year ending 30 November 2001 and over £350,000 in the year ending 30 November 2002. By 2002, Nuclei's clients already included many of the largest suppliers of serviced office space in the UK, including Regus. Nuclei's revenue increased to over £1.37m in the year ending December 2007. In the year ending December 2013 Nuclei's turnover was £852,747.
easyOffice
Following the launch of easyJet in 1995, Sir Stelios embarked upon various other business ventures that used the “easy” branding. The first of these were easyEverything (later renamed easyInternetcafé), which operated retail consumer internet cafes from June 1999; easyRentacar, which traded from April 2000; and easyValue, a price comparison website which was launched in November 2000. These businesses, like all subsequent “easy” businesses, shared a visual brand identity which was originally designed for easyJet in 1995 and which consisted of three elements: (i) the Cooper Black font; (ii) lowercase “easy” plus a capitalised second word; and (iii) white lettering on a Pantone 021c orange background.
The idea for easyOffice appears to date back to around September 2002. This led to the applications to register UK528A and EU509 being filed on 18 October 2002. By 13 March 2003 easyGroup had also acquired the domain name www.easyoffice.co.uk. No concrete steps were taken to launch the business until June 2006, however.
easyOffice opened its first location in Kensington, London on 14 November 2007 to a fanfare of publicity. That included a press release posted on both the easyOffice website and www.easy.com, which was also sent to a long list of media outlets. The launch was duly picked up in the media, including The Estates Gazette and The Sunday Times.
easyOffice Ltd was incorporated in June 2008. In August 2008 Mark Smith was appointed as CEO. It appears that he remained in that post until some time in 2013.
easyOffice was initially a successful business. Between 2007 and around March 2009 the Kensington location was running at over 80% capacity. In 2009 easyOffice expanded into four further London locations (Camden, Mayfair, Canary Wharf and Park Royal) and a location in Glasgow. Five further London locations followed (Hammersmith, Old Street, Wimbledon, Colindale, Borehamwood, and Brentford) as well as locations in Bristol and Manchester in 2010–2011.
By 2012, however, the tide had turned and customer numbers were decreasing. During one week in August 2012 there were just 25 transactions across all easyOffice branches, with occupancy rates at around 30% per day. The declining customer interest led to the closure of branches, and by February 2013 only the Wimbledon and Old Street locations were listed on the easyOffice website.
In July 2012 easyOffice Ltd entered voluntary liquidation, and in December 2014 the company was dissolved. Nevertheless easyGroup appears to have carried on the easyOffice business in the manner, and to the extent, discussed below until January 2019. In September 2019 easyGroup licensed Citibase to carry on the business under the name easyHub.
easyOffice Croydon
In August 2013 the easyOffice website announced the opening of new office space in Croydon. In October 2013 easyOffice emailed customers using its Old Street location advising them that it intended to stop taking further bookings at that location at the end of October 2013 and inviting booking for easyOffice Croydon from 4 November 2013. It appears that easyOffice stopped taking bookings for Wimbledon at about the same time. The first customer...
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