29 November 2018
The Applicant, (Graham & Brown Limited), filed a UK trade mark application for a series of two marks EASY WALLPAPER and EASYWALLPAPER in classes 27 and 35. The application was opposed by EASYGROUP LIMITED based on section 5(2)(b) “likelihood of confusion” and section 5(3) “reputation” of the Trade Marks Act 1994.
The Opponent relied on six earlier marks for its opposition under s5(2)(b): EASYJET (the first earlier mark), EASYGROUP (the second earlier mark), EASYHOTEL (the third earlier mark), stylised orange and white “easyOffice”, “easyLand”, and stylised orange and white and “easy Property” in classes 35, 36, and 42 (among others). The Opponent also relied on the first, second and third earlier mark for its opposition under s5(3) claiming that these marks have a reputation in class 39 for various transportation services, and that the third earlier mark has a reputation in class 43 for holiday accommodation services.
As regards section 5(2)(b), the Opponent claimed that there is a likelihood of confusion because the respective goods and services are identical or similar (claiming the class 35 services are identical/highly similar to the Opponent’s class 35 services, and 43 services – wallpaper is something that is complementary to hotel services as wallpaper will be found in hotel rooms, and so the opposed class 27 goods are therefore similar to the opponent’s class 35 and 43 services, stating “the two are natural companions and would look like natural extensions of the same business”) and the marks are similar.
As regards section 5(3), the Opponent claimed that the first, second and third earlier marks have a reputation in respect of the services in class 39 and 42 and that the use of the Applicant’s mark, without due cause, takes unfair advantage of, or would be detrimental to, the distinctive character and/or reputation of those earlier marks. The Applicant denied the grounds of opposition.
Both the Applicant and the Opponent filed evidence in the form of witness statements – the opponents’ speaking to the EASY family of brands and its licencing into various business sectors, and the Applicant’s which highlighted:
As none of the earlier marks had been registered for 5 years at the publication date of the application in issue in these proceedings they are not subject to proof of use.
The fact that hotel rooms are decorated with wallpaper is not sufficient to find complementarity between “wallpaper” in the Applicant’s specification and “hotel services” in the Opponent’s specification (or any of the related goods and services). The Hearing Officer could not see any reason why the consumer would expect the same undertaking to be responsible for the production of wallpaper and the provision of hotel and accommodation services. The Hearing Officer was not satisfied that there is any similarity between the class 27 goods in the Applicant’s specification and any of the Opponent’s services.
The Hearing Officer found that the only similarity lies between the “retail store services, retail mail order and on-line retail services connected with...paper, cardboard” in the Applicant’s specification and “retail services connected with the sale of...stationery” in the specifications of the first earlier mark, the second earlier mark and the sixth earlier mark and “the bringing together for the benefit of others of a variety of goods, namely... stationery” in the specification of the fifth earlier mark.
Visually, all four marks start with the word EASY and as a general rule the beginnings of marks tend to make more impact than the ends. The difference between the marks lies in the difference between the suffixes used in each mark. As notional and fair use means that the Opponent’s marks could be used in any standard typeface, the differences created by the capitalisation are not relevant. The Hearing Officer considered there to be a medium degree of visual similarity between the marks.
Aurally, the Hearing Officer considered a medium degree of aural similarity. Conceptually the only similarity is the use of the word “easy” which is itself descriptive of the nature of the goods/services and the different suffix used creates a conceptual difference, so the conceptual similarity is low.
As regards distinctiveness of the earlier marks, there is no doubt that EASYJET was highly distinctive for airline services at the relevant date. However, airline services were not relied upon for the purposes of the opposition under section 5(2)(b) and there was no evidence to suggest that EASYJET has become highly distinctive for the services in issue. Equally, there was no evidence to suggest that EASYGROUP or easyLand have become more distinctive through use in relation to the services in issue. The Hearing Officer therefore considered that the Opponent’s marks have an average degree of distinctive character.
The Hearing Officer considered that the visual, aural and conceptual differences between the marks were sufficient to ensure that they will not be misremembered or mistakenly recalled for each other. He was therefore satisfied that there is no risk of direct confusion.
As regards indirect confusion, the Hearing Officer did not consider that the Opponent had established that the public would expect any mark with an EASY-prefix and a descriptive suffix to be connected to the Opponent. He also considered that the goods and services covered by the Applicant’s mark were directed at different markets to the services covered by the Opponent’s earlier marks. The goods and services covered by the Applicant’s mark do not appear to be a natural extension of the businesses or attributes associated with the Opponent’s EASY marks: therefore, no indirect confusion either. The opposition failed under section 5(2)(b).
As to section 5(3), the Hearing Officer accepted that EASYJET had a strong reputation in the UK and EU at the relevant date in relation to airline services. However, the Hearing Officer was not satisfied that the Opponent’s evidence established that the reputation of the mark extended to other services (and the “link” requirement also failed). The Hearing Officer did not accept that EASYGROUP had a reputation as a trade mark at the relevant date but did accept that EASYHOTEL has a reputation in the UK and the EU in relation to the services on which the opponent relies in this opposition. The medium degree of aural and visual similarity between the marks, the low degree of conceptual similarity between the marks and the marked difference between the services for which the Opponent has proved it had a reputation at the relevant date and the Applicant’s goods and services made it unlikely that consumers will make any link between the marks in use. The opposition under section 5(3), consequently failed.
The opposition under sections 5(2)(b) and 5(3) was dismissed and the application will proceed to registration for all the goods and services for which registration has been sought. The case shows Easygroup Limited do not have a monopoly on all “EASY” marks.
Case ref: O/639/18