A recent trade mark infringement case heard in the UK High Court of Justice has helped illustrate potential difficulties that brand holders may face when enforcing, and claiming reputation for, marks with questionable levels of distinctiveness.
The Claimant, EasyGroup Limited (“EasyGroup”), is the proprietor of various “EASY”-formative companies and brands such as easyJet and easyHotel who unsuccessfully argued that their intellectual property rights under their “EASY family of brands” were being infringed by the Defendant’s (“Easy Cosmetics”) use of the term “easyCOSMETICS” in relation to the online retail of cosmetics, perfumes and toiletries in Germany and Austria.
The easyCOSMETICS brand was originally founded in 2008 as an online retailer of cosmetics and related products in Germany, Austria, Switzerland, The Netherlands and Belgium. Since its inception, the owner of the brand underwent a number of entity changes which resulted in the two companies Beauty Perfectionists Limited and Beauty International Austria Limited who, along with the now retired director of these companies, are the collective Defendants in this Claim. By 2019, one year before the proceedings commenced, the Defendants’ annual turnover was estimated to be over €72million.
EasyGroup claimed that the Defendant’s use of the mark “easyCOSMETICS” and stylised forms of this mark would create a likelihood of confusion for consumers and that the Defendants were trying to piggyback on the reputation of the “EASY” family of brands. EasyGroup initially attempted to rely on its registered rights for a range of its EASY-formative marks including easyJet, easyCar, easyBus, easyProperty, easyHotel, easyGym, and easyCoffee. However, this was later restricted to two registrations for the ‘EASYJET’ Mark and a request that the reputation of its other “easy”-formative marks be considered.
To counter the claim of infringement, the Defendants filed a partial non-use revocation action against one of EasyGroup’s earlier rights for the EASYJET mark, requesting the removal of the terms: Retail services connected with the sale of food and drink, preparations and substances for use in the care and appearance of the hair, lips, face, skin, nails and eyes, cosmetics, perfumes, fragrances, colognes and scents, sun-screening and tanning preparations, sunglasses’ in Class 35. EasyGroup were able to provide evidence that the EASYJET mark was in use for the contested services, but it was countered that this use was limited to in-flight retail only. When considering this point, the Court agreed that the average consumer would perceive a difference between the retail services offered in-flight and those offered in a brick and mortar establishment. EasyGroup argued that its offering of an online pre-ordering system constituted a separate retail channel, but this was rejected by the Court as sales through this method were not considered substantial. As a result of this, the contested services were ordered to be limited to cover in-flight retail services only. This limitation later played an important part in the Court’s ruling that there was no likelihood of confusion between the marks. It was held that in-flight retail services are perceived as ancillary to the transport services provided by the airline and consumers would not expect airlines to engage in the online retail of goods outside of the context of the flight.
When considering the assertions made by the Claimant regarding their reputation for the “EASY” family of marks, the Court discounted any reputation in Austria and Germany for any mark aside from EASYJET and EASYHOTEL as there was no evidence of market presence for these outside of the UK. EasyGroup argued that their use of the term “EASY” had led to the public associating this term solely with the EasyGroup and later that this had resulted in the element “EASY” acquiring enhanced distinctiveness. However, this claim was rejected due to insufficient evidence and the consideration that the term “EASY” is a common adjective often adopted by other brands.
The Court placed particular consideration on the fact that EasyGroup has strict agreements in place with licensees of its marks to adopt a standard stylisation method, being ‘the combination of the lower case word "easy" followed by the name of a particular service or product starting with an initial uppercase letter (such as easyGroup and easyJet), the use of the Cooper Black font, and the use of the Pantone 021c orange colour’ which, when combined together, is an indication made to the general public that the mark is associated with the Easy Group.
Notable consideration was also made of a system put in place by the Easy Group since 2002 in which they request the public to email them with details of any brands which they believe may be piggybacking on the reputation of the Easy Group. A review of the Claimant’s internal files shows that this system had only resulted in two emails which referred to easyCOSMETICS. A similar review of the Defendant’s internal files also resulted in only a small number of references to the Claimant being identified.
The court ultimately found that there was no likelihood of confusion between the Claimant’s and Defendant’s signs and therefore did not find it appropriate to consider any further grounds of infringement.
This case highlights that even well-known brands like EASYJET can face difficulties in enforcing trade marks that are descriptive. In general, trade marks with the highest level of inherent distinctive character and broadest scope of protection are fanciful or invented terms. If possible, it is best to avoid using signs which could be considered descriptive of the kind, quality or nature of the goods and services offered; such marks may not only face registrability issues due to their descriptive nature, but they can also be difficult to enforce against third parties.