Easynet Group Plc & Anor v Easygroup IP Licensing Ltd

For Trade Marks Act 1994, section 3(1)(c), a mark formed from descriptive elements must be assessed as a whole. It is permissible, but not essential, to examine the elements separately. The decisive question is whether the overall mark remains descriptive or produces an impression that is more than the mere sum of its parts.

There is no separate requirement to identify an unusual, extraordinary or out-of-the-ordinary combination. References to unusualness explain one possible way in which a combination may become more than the sum of its parts. Adding a domain suffix such as “.com” does not automatically create distinctiveness; the resulting mark must be assessed in its entirety.

Easynet Group Plc and Easynet Limited appealed against a decision of the Comptroller’s Hearing Officer dated 8 March 2006. The Hearing Officer had dismissed opposition to registration of easy.com under sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994.

The specification covered a wide range of goods and services. The appeal principally challenged the conclusion under section 3(1)(c), on the basis that “easy” and “.com” were each descriptive and that the Hearing Officer had failed to identify anything unusual in their combination. The central issue was whether such a separate unusualness requirement formed part of the legal test.

1. Appeal dismissed. The Hearing Officer’s decision was upheld. The appeal was a review rather than a rehearing. Intervention was justified only for an error of principle, error of approach or serious procedural irregularity.
2. Under section 3(1)(c) of the Trade Marks Act 1994, the court must assess the mark as a whole to determine whether it is descriptive. Examination of individual elements is permissible and may assist the overall assessment, but the overall impression is decisive.
3. The court rejected the proposed structured test requiring the applicant to show an unusual or special combination whenever the constituent elements are descriptive. The authorities, including SAT.1 SatellitenFernsehen GmbH v OHIM, Case C-329/02 P, showed that separate analysis must not replace assessment of the overall perception of the mark.
4. BioID AG v OHIM, Case C-37/03 P, confirmed that individually non-distinctive elements may nevertheless form a distinctive combination. Eurohypo AG v OHIM, Case T-439/04, and Koninklijke KPN Nederland NV v Benelux Merkenbureau, [2004] ETMR 57, did not impose a discrete unusualness requirement. Their references to unusualness described one possible explanation for a mark being more than the sum of its parts.
5. The Hearing Officer had applied the correct overall approach. His conclusion that easy.com was not descriptive was one he was entitled to reach. The section 3(1)(b) ground raised no separate issue. The respondent was awarded costs assessed at £3,180.

• High Court (Patents Court): Appeal from the Comptroller’s Hearing Officer’s decision dated 8 March 2006. The appeal was dismissed and costs were assessed at £3,180.