Easygroup Ltd v Easy Live (Services) Limited & Ors
[2024] EWHC 2282 (Ch)
EasyGroup Limited v Nuclei Limited & Ors
27 October 2023
[2023] EWCA Civ 1247
Court of Appeal
easyGroup sued because another company used a very similar name for its office-finding service. The judge and appeals court said the names were close but not identical enough to cause confusion, and easyGroup hadn't used its own name enough to keep the trademark.
Key Facts
- •easyGroup appealed the dismissal of its trade mark infringement claim against IWG group companies (Nuclei, Pathway, Regus, IWG).
- •The dispute concerned easyGroup's EASYOFFICE trade marks and Nuclei's use of EASYOFFICES.
- •Nuclei operated primarily as an online broker for serviced office space.
- •easyGroup launched its easyOffice business in 2007, but it ceased operations in 2013, entering liquidation.
- •There was prior correspondence between the parties dating back to 2001 regarding brand identity.
- •The case involved various UK and EU trade mark actions, including invalidity and revocation proceedings, that spanned several years.
- •The appeal focussed on whether Nuclei's use of EASYOFFICES infringed easyGroup's EASYOFFICE marks and whether the marks should be revoked for non-use.
Legal Principles
Trade mark infringement under section 10(1) of the 1994 Act / Article 9(2)(a) of the EUTM Regulation requires identical sign and services; likelihood of confusion must be considered.
Trade Marks Act 1994, EUTM Regulation
Identity of mark and sign requires strict identity; differences must not be noticeable to average consumer.
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA, Reed Executive plc v Reed Business Information Ltd
Trade mark infringement under section 10(2) of the 1994 Act / Article 9(2)(b) of the EUTM Regulation requires similar sign and services and a likelihood of confusion.
Trade Marks Act 1994, EUTM Regulation
Likelihood of confusion assessed globally, considering average consumer's perception, visual, aural and conceptual similarities; honest concurrent use is a relevant factor but not a defense.
CJEU case law, Specsavers International Healthcare Ltd v Asda Stores Ltd, Match Group LLC v Muzmatch Ltd
Trade mark revocation for non-use under section 46(1) of the 1994 Act requires proof of genuine use within 5 years; genuine use means actual commercial use consistent with the mark's essential function.
Trade Marks Act 1994, CJEU case law (Ansul, La Mer, Sunrider, etc.)
Outcomes
Appeal dismissed.
The court found that Nuclei's use of EASYOFFICES did not infringe easyGroup's EASYOFFICE trade marks, neither under section 10(1) (identical sign and services) nor section 10(2) (similar sign and services, likelihood of confusion) of the 1994 Act due to lack of identity between marks and differences in services provided. The absence of evidence of actual confusion was a significant factor against a likelihood of confusion. The court also found that honest concurrent use was a relevant factor.
easyGroup's trade marks revoked for non-use.
The court found insufficient evidence of genuine use of the EASYOFFICE marks during the relevant period (2014-2019). The evidence regarding use at Croydon premises and through the Instant Offices arrangement was deemed insufficient to prove real commercial exploitation.