W3 Ltd v Easygroup Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 12 January 2018 |
| Neutral Citation | [2018] EWHC 7 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2015-002009 |
| Date | 12 January 2018 |
and
[2018] EWHC 7 (Ch)
Mr Justice Arnold
Case No: HC-2015-002009
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC2A 1NL
Mark Vanhegan QC and Chris Aikens (instructed by Clintons) for the Claimant and Third Party
Tom Moody-Stuart QC and Jessie Bowhill (instructed by Eversheds Sutherland (International) LLP) for the Defendant
Hearing dates: 14–17, 20–21, 23–24 November 2017 Further written submissions 28 and 30 November 2017
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.
Contents
| Topic | Paragraphs |
| Introduction | 1 |
| The witnesses | 2–17 |
| Factual witnesses | 2–13 |
| W3's witnesses | 2–12 |
| easyGroup's witness | 13 |
| Expert witnesses | 14–17 |
| Linguistics | 15–16 |
| New York law | 17 |
| Factual background | 18–143 |
| easyGroup and its licensees | 19–62 |
| easyJet | 19–30 |
| easyEverything, later easyInternetcafé | 31–36 |
| easyRentacar, later easyCar | 37–40 |
| easyGroup | 41–50 |
| easyValue | 51–52 |
| easyHotel | 53–56 |
| easyOffice | 57 |
| easyProperty | 58–59 |
| easyCruise | 61 |
| Other “easy-” brands | 62 |
| EasyRent | 63–65 |
| EasyRoommate | 66–103 |
| Vivastreet | 104 |
| Third party uses of names which include the word Easy | 105–112 |
| easyGroup's brand protection efforts | 113–119 |
| Complaints by easyGroup to EasyRoommate | 120–143 |
| easyGroup's EU trade marks | 144 |
| The signs complained of | 145–146 |
| Key legislative provisions | 147–149 |
| The average consumer | 150–152 |
| The law | 150 |
| The present case | 151–152 |
| Validity of the EASY trade mark | 153–189 |
| The law | 154–165 |
| Article 7(1)(c) of the Regulation | 154–155 |
| Acquired distinctive character | 156–165 |
| Assessment | 166–189 |
| Article 7(1)(c) | 166–171 |
| Acquired distinctive character | 172–189 |
| Revocation of the EASY trade mark for non-use | 190–210 |
| The law | 194–202 |
| Genuine use | 194–195 |
| Genuine use in the EU | 196 |
| Use of the trade mark in a form differing in elements which do not alter its distinctive character | 201–202 |
| Scope of the specification | 197–200 |
| Assessment | 203–210 |
| The relevant period | 203 |
| easyGroup's preliminary point | 204–205 |
| Genuine use | 206 |
| Use in a form differing in elements which do | 207–208 |
| not alter the distinctive character of the trade mark Use in the EU | 209 |
| Date of revocation | 210 |
| Contextual assessment of easyGroup's infringement claims | 211 |
| Relevant date for assessment of easyGroup's infringement claims | 212–227 |
| The law | 213–218 |
| Assessment | 219–227 |
| Infringement under Article 9(1)(b) in the UK | 228–287 |
| The law | 229–236 |
| Comparison of services | 230 |
| Likelihood of confusion | 231–232 |
| Common elements with low distinctiveness | 233 |
| Family of marks | 234 |
| Colour | 236 |
| Assessment: EasyRoommate and easyroommate | 237–278 |
| The distinctive character of the trade marks | 237–238 |
| Comparison of services | 239–241 |
| Comparison of signs | 242–248 |
| Has there been actual confusion? | 249–276 |
| Overall assessment | 277 |
| Conclusion | 278 |
| Assessment: the Roof Logo | 279–286 |
| Honest concurrent use | 287 |
| Infringement under Article 9(1)(c) in the UK | 288–300 |
| The law | 289–290 |
| Reputation of the trade mark | 291–293 |
| Link | 294 |
| Detriment to the distinctive character of the trade mark | 295–296 |
| Detriment to the repute of the trade marks | 297 |
| Unfair advantage | 298–300 |
| Due cause | 301 |
| Assessment: EasyRoommate and easyroommate | 302–318 |
| Reputation of the trade marks | 302–306 |
| Link | 307–313 |
| Detriment to the distinctive character of the trade marks | 314 |
| Detriment to the repute of the trade marks | 315 |
| Unfair advantage | 316 |
| Due cause | 317 |
| Conclusion | 318 |
| Assessment: the Roof Logo | 319–337 |
| Reputation of the trade marks | 319 |
| Link | 320–322 |
| Detriment to the distinctive character of the trade marks | 323 |
| Detriment to the repute of the trade marks | 324–329 |
| Unfair advantage | 330–335 |
| Due cause | 336 |
| Conclusion | 337 |
| Infringement by the European Equivalents | 338 |
| Statutory acquiescence | 339–354 |
| The law | 340–346 |
| Assessment | 347–354 |
| Limitation | 355–362 |
| Passing Off | 363 |
| Validity of easyGroup's EU trade marks other than EASY and EASYJET | 364–403 |
| Did goodwill attach to EasyRoommate at the relevant dates? | 367 |
| Must W3 show that it owned the goodwill? | 368–374 |
| Does W3 own the goodwill? | 375–403 |
| Was there a written agreement in 2003? | 378–385 |
| Did the Software Agreement assign goodwill from DMISL to W3? | 386–390 |
| Did the 2015 Confirmatory Assignment assign goodwill from DMISL to W3? | 391–397 |
| Did the 2017 Confirmatory Assignment assign goodwill from DMISI to W3? | 398–403 |
| Validity of W3's UK trade mark | 404–406 |
| Revocation of W3's trade mark | 407–408 |
| Threats | 409–423 |
| The law | 411–412 |
| Assessment | 414–423 |
| Actionable threat | 414–421 |
| Person aggrieved | 422 |
| Justification | 423 |
| Declaration pursuant to the inherent jurisdiction | 424 |
| Summary of principal conclusions | 425 |
Introduction
This is a trade mark dispute of considerable complexity: the agreed list of issues at the start of the trial ran to no less than 44 issues, although a few were dropped during the course of the trial. Distilled to its essence, however, the core of the dispute is whether the Claimant (“W3”) has infringed any valid EU trade mark of the Defendant (“easyGroup”) by use of the sign “EasyRoommate” and variants thereof in relation to an online service for sharing accommodation in the UK and eight other EU Member States. There are also issues as to the validity and revocability of trade marks owned by both parties, as to passing off, as to defences raised by W3 and as to threats made by easyGroup. It is common ground that the Third Party (“Mr Pons”) is jointly liable for any infringement or passing off by W3.
The witnesses
Factual witnesses
W3's witnesses. W3 called nine witnesses who have for varying periods been involved in the EasyRoommate business.
Mr Pons has at all material times been the sole or majority beneficial owner of W3 and its predecessors. He coined the name EasyRoommate in 1999, as explained in more detail below. As he accepted, Mr Pons had a poor recollection of relevant events, even recent ones. As a result, he made a number of factual errors during the course of the proceedings which he subsequently had to correct, including during his oral evidence. Counsel for easyGroup submitted that Mr Pons had on occasion been less than candid with the court when he believed his own interests required it. I do not accept this. In my view, the instances relied upon in support of this submission are examples of poor recollection and confusion rather than a lack of candour. Nevertheless, I do accept that Mr Pons' evidence must be treated with some caution unless it is supported by contemporaneous documents or corroborated by other reliable evidence.
Alexis Bougon started working for the EasyRent business in New York in 1998 as a web designer. He gave evidence as to how he redesigned the EasyRent logo and website soon after he joined, of his design of the first EasyRoommate logo and website in early 1999 and all subsequent redesigns of both the EasyRent and EasyRoommate websites up to 2004. From 2004 to June 2016 he worked as Head of Products for Vivastreet. He retained a shareholding of 3% in W3 from which he received substantial dividends, a matter which was not revealed in his witness statement, as it should have been. Accordingly, he accepted that he had a financial interest in this dispute being resolved in W3's favour. Despite this, counsel for easyGroup accepted that he had given his evidence fairly.
Karim Goudiaby first joined the EasyRoommate business as an intern at the start of 2002. After a short break from the business, he returned ultimately to take charge of the business globally from 2008 until December 2015, when he left the business altogether. From his return to the business in 2006, he was involved in most aspects of the business, including communications with easyGroup and its lawyers and negotiations to sell the business. Mr Goudiaby gave evidence by videolink from Mexico, where he is currently resident. Counsel for easyGroup submitted that his evidence was unreliable. Two matters were relied upon in support of this submission. The first was that both Mr Goudiaby and Mr Berton had said that EasyRoommate had been “born out” of EasyRent and that Mr Goudiaby could not explain the use of the same expression. As counsel for W3 pointed out, however, Mr Berton was not asked about this. The second was that, as Mr Goudiaby accepted, the figures he gave for marketing expenditure in the period 2003/2004 were inflated. I attribute this, however, to poor recollection given the passage of time, which is hardly surprising.
Jeremie Berton also began working for the EasyRoommate business in 2002. He was given responsibility for the UK EasyRoommate business by Mr Pons shortly after joining, and so was part of the discussions and decisions as to the branding and appearance of the UK website between 2002 and at least the end of 2006. He is currently the Chief Executive Officer of WebDMUK Ltd (“WDMUK”), a company which provides services to W3, including in relation to the EasyRoommate business. Mr Berton had a 7% shareholding in W3 from which he received substantial dividends, a matter which was...
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