Two easyGroup High Court decisions – two different results on revocation of the same registrations!

What has happened?

The High Court has just handed down two decisions in actions brought by easyGroup against separate defendants for infringement of its recently acquired "easylife" logo trade mark registration. In both actions, the defendants counterclaimed that easyGroup's logo registration is revocable for non-use because it has not been used in the form in which it was registered. 

In the two decisions, the judges came to opposing views on this issue. Why? Because trade mark law is difficult and the case finely balanced! You decide which judge was right…

The law on the use of variant marks

Use of a registered mark includes use in a form which does not alter the distinctive character of the mark as registered (a "variant" form). It is established case law that there are two parts to the inquiry. First, it is necessary to identify the points of difference between the mark as used and the mark as registered and, second, to ask whether those differences alter the distinctive character of the mark as registered. The assessment is made from the viewpoint of the average consumer.

The variants in question

The table below depicts the claimant's mark as registered and the various forms in which it was used by (or with the consent of) the claimant, each of which was alleged to constitute genuine use.

The reasoning in Easy Live Auction

In the Easy Live Auction case, specialist IP judge Mr Nicholas Caddick KC, held that each of the uses sufficed to stave off the revocation action. His reasoning included the fact that:

• The average consumer would see the distinctive and dominant element of the registered mark as comprising the word easylife, which is unaltered aurally and conceptually across all of the marks and (in marks 1-3) is visually very similar (with the small differences in fonts not having any real significance). 

• While the tick is more prominent in marks 1-3 than in the triangle of the mark as registered, the average consumer would still perceive the tick in the triangle of the latter mark. In addition, changes to figurative elements are less likely to be regarded as changing the distinctive character of a mark. 

• Given that the strapline is of little distinctive character and is depicted in much smaller font than the word easylife, the average consumer would not view a change to - or the absence of – it as altering the distinctive character of the mark as registered. 

• Even the use of marks 4 and 5 suffices – easylife is retained and remains the distinctive and dominant element of these marks.

The reasoning in easyfundraising 

The judge in the easyfundraising case, Mr Justice Fancourt, was given a copy of the Easy Live Auction decision while his own decision was still in draft form. Despite reviewing the Easy Live Auction decision, he maintained his initial view that the changes contained in the variant forms altered the distinctive character of the mark as registered. He therefore revoked the easylife logo registration for non-use. His reasoning included that:

• Marks 1-3 create visually a different overall impression from the mark as registered: the design has been significantly changed. The prominent elements of the new designs are the word, the more decorative font and the outsize tickball motif.

• The tickball is a strong and distinctive element of marks 1-3. Perhaps the idea of it came from the original design of the mark as registered, but it would not be recognised as such by the average consumer. The ball is new, the tick is prominent, and the size and position (and impact) of the device are entirely different.

• He was not persuaded that the word “easylife” is the only distinctive element of the mark as registered, or that the average consumer would detect the tick within the triangle motif in the registered mark and link it to the tickball motif. Even placing the forms side-by-side, which the average consumer does not have the ability to do, it is not an obvious connection.

The answer!

What makes this case difficult is the number of changes to the easylife logo (as used compared to as registered) and – perhaps more importantly - the fact that the tickball occupies a reasonably prominent position in marks 1-3. 

While the answer is not clear-cut, the judge's reasoning in the Easy Live Auction case (that use of the variants counts) arguably aligns more closely with Common Communication CP8 on the Use of a Trade Mark in a Form Differing from the one Registered - a useful (but non-binding) reference for considering this issue. It – and to some extent the case law, too – suggests that there is relatively broad tolerance for changes to logo elements and stylization, but not words (except where those words are non-distinctive and non-dominant). From a pure policy perspective, that makes sense.  

easyGroup has already announced that it will appeal the easyfundraising decision, presumably including the finding that the easylife logo should be revoked for non-use. A Court of Appeal decision will be an interesting and valuable ruling on genuine use.

In the meantime, brand owners should consider the impact of any changes they make to their brands, especially any logos, on their trade mark registrations. New applications should be considered where it is not clear that use of the updated brand would count as use of the mark as registered.