Key Facts
- •EasyGroup Ltd (Claimant) brought a trademark infringement action against Easy Live (Services) Ltd and its directors (Defendants) under s.10(2)(b) of the Trade Marks Act 1994.
- •The Claimant relied on the 'easylife' stylised and word marks, acquired through a settlement agreement.
- •The Defendants provide back-office software and an online auction platform using 'EASY LIVE' and related signs, including a registered UK trademark.
- •The case involved claims of infringement, counterclaims for revocation of the Claimant's marks for non-use, and counterclaims for invalidity of the Claimant's marks due to the Defendants' prior use.
- •The relevant dates for assessing infringement were the dates the Defendants commenced use of each sign.
- •The average consumer was identified as both the general public and business organizations, depending on the service in question.
Legal Principles
Trade mark infringement under s.10(2)(b) requires a similar sign used in relation to identical or similar goods/services, creating a likelihood of confusion.
Trade Marks Act 1994, s.10(2)(b)
Revocation of a trade mark registration under s.46 for non-use requires non-use within five years, with no proper reasons for non-use.
Trade Marks Act 1994, s.46
A variant form of a registered mark, under s.46(2), does not alter the distinctive character of the registered mark.
Trade Marks Act 1994, s.46(2); Walton v Verweij Fashion [2018] EWHC 1608 (Ch)
Invalidity of a trade mark registration under s.5(2)(b) occurs if the mark is similar to an earlier mark, registered for identical or similar goods/services, causing likelihood of confusion.
Trade Marks Act 1994, s.5(2)(b)
Invalidity of a trade mark registration under s.5(4)(a) occurs if the mark's use is prevented by a rule of law (e.g., passing off) protecting earlier rights.
Trade Marks Act 1994, s.5(4)(a)
Honest concurrent use is not a defence to trade mark infringement but may be a factor in the infringement analysis; the defendant must show no adverse effect on the trade mark's functions.
Easygroup Ltd v Nuclei Ltd [2024] EWCA Civ 1247
Outcomes
Claimant's infringement claims based on the 'easylife' stylised and word marks were dismissed.
No likelihood of confusion; moderate similarity between marks/signs, but conceptual differences and distinctive features of the marks outweighed similarities; limited evidence of actual confusion.
Claimant's claim to invalidate the Defendants' 'EASY LIVE AUCTION' mark was dismissed.
No likelihood of confusion between the Defendants' mark and the Claimant's earlier 'easylife' stylised mark.
Defendants' counterclaims for revocation of the 'easylife' stylised mark and invalidity of the 'easylife' word mark were dismissed.
Sufficient use of variant forms of the 'easylife' stylised mark to avoid revocation; no likelihood of confusion to invalidate the 'easylife' word mark.