High Court rules that the descriptiveness of the "easy" word, the conceptual differences between the marks, and the context of use were sufficient to avoid a finding of a likelihood of confusion.
What has happened?
- The High Court has held that there is no likelihood of confusion between various easylife marks and various easy live/EASY LIVE AUCTION signs despite the identity/closely similarity of the services in question and the earlier mark having an enhanced distinctive character through use.
- The Court was of the view that the word “easy” is a simple descriptive word, frequently used both by itself and in combination with other words to form a brand (easy + use). In addition, the marks/signs were conceptually very different – "easy life" being a well-known saying and standing on its own whereas "easy live" being adjectival in nature and not standing by itself. Even where the "easy life" mark is used without the word "Auction", these factors plus the context of use (on an online auction platform) would enable the average consumer to distinguish the marks.
- The decision illustrates the difficulties of enforcing marks consisting of relatively descriptive and commonplace words even where those words have been successfully registered and may have enhanced distinctive character through use. It is also another example of conceptual differences between marks paying a key role in a finding of no likelihood of confusion, emphasising the importance of giving conceptual similarity adequate consideration when clearing new marks and when considering enforcement (although see the CA ruling in Vetsure on conceptual similarity, here). Finally, it shows that context of use can also help negate a likelihood of confusion in the infringement context.
- The decision also contains useful clarifications on the relevant date for assessing infringement, on revocation where there is use of variant marks, and on competing rights.
- This is the second infringement action brought by the Claimant (the Easy group of companies, controlled by Sir Stelios Haji-Ioannou) against the Defendants (Easy Live Services and its directors) about the latter's use of easy live/EASY LIVE AUCTION for an online auction platform. The first action - based on the Claimants EASY JET, EASY GROUP, EASY MONEY etc registrations - also largely failed. Following the first action, the Claimant purchased the "easy life" registrations asserted in the second action as part of a settlement deal with a third party, given it a second "bite of the cherry".
Want to know more?
What was the case about?
The marks/signs in issue and the services for which they are registered or used are listed in the table at the end of this article. The marks registered by the Claimant include easylife and Easylife (word only series mark). The signs used by the Defendant include the words easy live and EASY LIVE AUCTION (word only). Both parties also had logo forms of their marks/signs.
As well as the trade mark infringement claim, there were claims and counterclaims for revocation and invalidity.
Was it the relevant date for assessing trade mark infringement?
The case confirms that the date for assessing infringement is the date when the use of the allegedly infringing sign began. This is the case even where that date is more than six years before the claim form was issued (and so outside of the limitation period).
However, the relevant date cannot be earlier than the date from which the trade mark alleged to be infringed is effective (and so infringement will be judged at the effective date of the trade mark alleged to be infringed if use of the allegedly infringing sign began before that date).
Moreover, if at a later date the Defendant has used the sign alleged to infringe in a materially different manner or context, then a new global assessment has to be made as of that later date.
Why was there no likelihood of confusion?
The Court held that:
- There is clearly a visual and aural similarity between the Claimant's marks and the Defendants’ signs in that they all feature the word “easy” and they all use that word in conjunction with a similar second word. Aurally and, particularly, visually those words are the most important part of the mark/sign as a whole.
- A further similarity is that, in the case of the Defendants’ two logos, the two words are run together without a gap just as they are in the Claimant's mark.
- Despite this, the average consumer would see the Defendant's signs as having, at best, a moderate level of similarity to the Claimant's word only mark and a low level of similarity to the Claimant's logo mark.
- There is no likelihood of confusion because the word “easy” is a simple descriptive word that is frequently used both by itself and in combination with other words to form a brand (easy + use). The easy + life combination is a well-known part of speech and stands on its own.
- Conversely, the Defendant's easy + live combination is conceptually very different - it does not stand by itself but is adjectival in nature. It begs the question "easy live" what?
- In several of the Defendant's marks, this question is answered – EASY LIVE AUCTION. The average consumer would not skate over the inclusion of the word Auction. Where the Defendant's mark does not contain the word Auction, the question is likely to be answered by the context in which the sign is used and which, in this case, is likely to make clear that it is a live auction.
What did the Court say about competing rights?
There was a short discussion about what happens where an invalidity action based on earlier passing off rights is brought against a trade mark registration where the owner of that registration has an even earlier trade mark registration (and/or passing off rights) that predate the passing off rights asserted in the invalidity action. Although not necessary to decide the issue in this action, the Court held that the invalidity action would have failed based on the earlier rights.
What did the court say about the use of variants of a mark?
The ruling also contains a useful discussion about revocation for non-use where a logo mark is used in a form different to that to which it is registered. However, as this aspect of the ruling directly conflicts with another ruling about the use of variants of the same easy life logo mark, also handed down by the High Court this month, we consider the two rulings together (here).
What does this mean for you?
- The case shows the problems inherent in trying to enforce marks consisting of relatively descriptive and commonplace words (or logos) – whether they be the word "easy" or depictions of polo players on horseback or of a rose (more here) - even where those marks have been successfully registered and may have acquired distinctiveness/reputation through use. While the owners of such marks might have some success, the bar will be set high. The position should be contrasted with a recent decision where the High Court held that, although the mark VETSURE might be allusive, it is not descriptive (more here).
- Where the shared element of two marks is relatively descriptive, small differences (eg in conceptual meanings) will often be sufficient to negate a finding of a likelihood of confusion.
- While not discussed in any detail, the decision also illustrates that context of use can help to negate a likelihood of confusion in an infringement action (although the same might not be true in an opposition or invalidity context).
Claimant's UK trade mark registrations |
Marks used by the Defendant |
easylife and Easylife (series) (word only) registered for services including advertising and marketing services and retail services, including on-line retailing and retailing through the medium of broadcasting for a wide range of goods (Class 35) |
EASY LIVE (plus variations including easy live and Easy Live) used in relation to an auction platform comprising advertising catalogue and auction broadcast services |
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EASY LIVE AUCTION (plus variations including EasyLiveAuction and EasyLiveAuction.com) used in relation to an auction platform comprising advertising catalogue and auction broadcast services |
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EASY LIVE (SERVICES) LTD used as the Defendant's corporate name |
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used in relation to an auction platform comprising advertising catalogue and auction broadcast services |
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used in relation to an auction platform comprising advertising catalogue and auction broadcast services |