Easy Come, Easy Go?

easyGroup Limited has lost its claim of trade mark infringement against easyCOSMETIC in a High Court decision handed down on 13 June 2024, which also partially revoked one of its EASYJET trade marks:  easyGroup Limited v Beauty Perfectionists Limited. 

Background

easyGroup Limited ("easyGroup") claimed that the defendants (“Beauty Perfectionists”) infringed two of its EU trade marks for EASYJET by using the sign "easyCOSMETIC" for Beauty Perfectionists' online retail of cosmetics, perfumes and toiletries, which primarily targeted consumers in Germany and Austria.  It claimed infringement under Articles 9(2)(b) and 9(2)(c) of EU Regulation 2017/1001, i.e. identical or similar mark used in relation to identical or similar goods or services, where there is likelihood of confusion (Art 9(2)(b)), and identical or similar mark used in relation to any goods or services, where mark has a reputation and use takes unfair advantage of or is detrimental to the distinctive character or repute of the mark (Art 9(2)(c)).  

Note that given the dates of the alleged infringements and issuing of the proceedings, the UK High Court in this instance was sitting as an EU Trade Mark Court, applying EU law.

The easyCOSMETIC business was founded in 2008, and had been carried on since then as an online-only retailer of cosmetics, perfumes and toiletries, as well as related accessories. Its products were marketed through websites directed at consumers in Germany, Austria, Switzerland, the Netherlands and Belgium, although the case focused on Germany, Austria and some overspill in the UK.

easyGroup initially relied on a number of marks, later reducing the claim to the alleged infringement of the word mark EASYJET, via EUTM No. 1232909 (the "909 Mark") and EUTM No. 10584001 (the "001 Mark").  Its complaints centred on Beauty Perfectionists' use of:

• the word "easyCOSMETIC" used since 2008, with no stylisation other than the use of lower and upper case
• the orange/black sign used from 2009 - 2016:
• the white/black sign used from 2017 - 2022:

Beauty Perfectionists counterclaimed for partial revocation for non-use of the 001 Mark.

In 2011, easyGroup had written to easyCOSMETIC Vertrieb (which was then the only operating company for the easyCOSMETIC business) complaining about the use of the easyCOSMETIC signs. easyCOSMETIC Vertrieb replied and refused to provide the requested undertakings. easyGroup took further no action on this until 2019, when easyGroup sent Beauty Perfectionists a letter before action; some correspondence ensued followed by a quiet six months before easyGroup issued its claim in March 2020.

Claims

For the purposes of its Article 9(2)(b) claim, easyGroup relied only on the 001 Mark, which was filed on 24 January 2012 and was registered (after partially surviving unrelated revocation proceedings) in Class 35 for "Retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses, jewelry, watches, purses, wallets, pouches and handbags; games".  

For the purposes of the Article 9(2)(c) claim, easyGroup relied on both the 001 Mark and the 909 Mark, which was filed on 1 July 1999 and was registered (amongst other terms) in Class 39 for: "Transportation of goods, passengers and travellers by air; travel agency and tourist office services".

The Decision

Revocation for non-use

Beauty Perfectionists argued that the 001 Mark should be partially revoked so as to be limited to "in-flight retail", given the services were only provided to passengers on an aeroplane. In response, easyGroup argued that the intended purpose of goods or services did not permit a distinction to be drawn between different types of retail channels, such as in-flight sales. In addition, it argued that online pre-orders would fall outside the definition of in-flight sales, and that the sales by easyJet made via online pre-orders were not merely token but constituted genuine commercial use of the mark.

The judge (Mrs Justice Bacon) set out clearly the law regarding revocation for non-use, and went on to note that "[n]either party has been able to identify a case in which a subcategory of goods or services has been defined by reference to a particular retail channel.  I do not, however, consider that this precludes the definition of a coherent subcategory of in-flight retail services in the present case". 

It was clear that the purpose and functioning of the retail service provided on board an aeroplane was very different to that provided from a bricks and mortar shop, and it was legitimate to regard in-flight retail as a distinct subcategory of retail services.

As to pre-orders, the goods had all been ordered by flight bookers and delivered on board flights. The evidence showed that the volume of pre-orders was "miniscule", and did not serve to create or preserve market share for the goods.  It did not, therefore, amount to genuine use of retail services outside the in-flight retail subcategory (for which it did prove genuine use).   The 001 Mark was limited to in-flight retail services from 10 January 2020 - the day after the expiry of the five year period from its registration.

Family of Trade Marks

easyGroup argued that the Court should take into account the "easy" family of marks when considering likelihood of confusion for Article 9(1)(b) and the link between the mark and sign for Article 9(1)(c). Examples of members of that family cited in the judgment include:

The Court had to decide if,  by the relevant dates, easyGroup owned a family of marks consisting of the word 'easy' and a second, sometimes conjoined, word referring to the goods/services offered.

It was common ground that the average consumer was from the UK, Germany or Austria. 

In terms of the UK, the Court held easyGroup could rely on the existence of a family of marks with respect to certain brands, at the relevant points in time, on the basis of the market presence of a number of marks, many of which were short-lived, including easyHotel, easyGym and easyInternetCafe, alongside easyJet. The same did not apply to Germany and Austria where the Court held the evidence only established use of up to two of the "easy" marks on the market at the relevant time and was therefore insufficient to permit a finding of a family of marks in those territories.

However, the Court rejected easyGroup's claim that its use of a family of marks had come to indicate to the average UK consumer, by the relevant date, that the use of a mark comprising "easy" before or as a prefix to a word or words alluding to goods and services was a reference to goods and services associated with, approved, authorised or endorsed only by easyGroup. It was held the evidence did not establish that, by simply using the word "easy" with a second word and using the signs in orange/white colours, consumers in the UK or elsewhere would at any material time perceive the sign as an indication of an easyGroup brand; in fact it was "an extreme proposition which is not remotely established on the evidence before the court".

The Court further noted that "easy" is a common descriptive word used by many other enterprises, several of which had been recently held not to infringe easyGroup's marks¹, and that easyGroup required its licensees to adopt a common stylisation, indicating that a specific presentation was required to signify belonging to the easyGroup family of marks.  Relying on a family of marks did not assist easyGroup here.

Infringement under Article 9(1)(b) – Likelihood of Confusion

The Court set out a reminder of how likelihood of confusion should be assessed, including the distinction between direct and indirect confusion.  Direct confusion is where consumers mistake the disputed sign for the trade mark, whilst indirect is where consumers do not mistake the sign for the trade mark but believe the undertakings behind them are somehow economically linked.  Here, easyGroup's case was one of indirect confusion with the 001 Mark: at the relevant time, did the average consumer believe easyCOSMETIC was a business that was economically linked to easyGroup?

The Court held that there were factors pointing in both directions, towards and away from a likelihood of confusion.  Beauty Perfectionists' services were identical to the Class 35 services of the 001 Mark until 10 January 2020, from which date the mark's specification had been limited by this decision, and of moderate similarity thereafter in respect to in-flight retail of cosmetics. However, those similarities were outweighed by the clear visual and conceptual differences between the marks, and the context of use by Beauty Perfectionists.  The 'family of marks' argument did not help easyGroup, and 'easy' had no inherent distinctive character.  It was also significant that no instance of genuine confusion had been identified, despite 15 years of parallel trading.

Taking account of all factors, the Court held there to be no likelihood of indirect confusion and therefore Beauty Perfectionists had not infringed the 001 Mark, pursuant to Article 9(2)(b), by their use of the easyCOSMETIC word sign and the orange/black and white/black figurative signs.

Infringement under Article 9(1)(c) – Reputation  

Article 9(1)(c) infringement requires a link to be made by the average consumer between the sign and the marks, as well as a change in the economic behaviour of consumers (or a likelihood of such a change).

The Court did not consider the word easyCOSMETIC would create a link to the EASYJET marks in the mind of the average consumer. The sole linking factor was the use of the word "easy" at the start of the marks and the sign; however, this was not sufficient to create a link, especially as there was no likelihood of confusion and the services were different.  Article 9(1)(c) infringement does not require a likelihood of confusion, but it can be a factor, and here, easyGroup's claim to detriment was based on there being a likelihood of confusion.

easyGroup provided no evidence of a change or its likelihood to the economic behaviour of consumers; its submissions instead related to damage to the strength of the family of marks.  The presentation of the easyCOSMETIC sign was not identical or significantly similar to the presentation of the family of marks, and in any event, what is under consideration is not detriment to the family of marks, but detriment to the EASYJET marks.

Any plausible link between the marks would be confined to the orange/black sign; however, while the easyCOSMETIC sign used in the orange/black font could lead to a link to the EASYJET mark in the mind of the average consumer, the Court held that "a claim of detriment to the character of the marks is entirely implausible".  Further, and particularly considering the different services, it was found there was no unfair advantage taken.

Comments

The decision highlights the importance of trade mark owners being able to show genuine use of their registrations for the broad scope of goods and services claimed, particularly when the decision is made to enforce those same registrations against third parties.

The case also identifies the importance of taking action without any delays when facing potential infringement of their rights. One of the deciding factors in considering if there was any likelihood of confusion was that there was no instance of genuine confusion during the years of parallel trading. There were no instances of confusion found either during the period between sending their initial letter to Beauty Perfectionists in 2011 and 2020 when the claim was issued, or indeed during the entire 15 year period the businesses had been trading in parallel. This length of time was a contributing factor to a finding of no likelihood of confusion, and it was held there had plainly been no real adverse effect on easyGroup.

Finally, Sir Stelios Haji-Ioannou, the ultimate owner of easyGroup, has said in the "brand thief news" section of the group's website at easy.com:  "We believe that the judge made various errors of law and we will seek permission to appeal this decision to the UK Court of Appeal as well as continue our separate court case in Germany based on our own locally registered German trade mark against www.easycosmetic.de."  We will watch out for whether permission to appeal is granted or not.

Footnotes

¹ easyGroup has brought a number of trade mark and passing off actions in the UK in recent years.  See for example our previous blog here:  Not an "easy" life: the easyGroup's trade mark odyssey continues | Fieldfisher