W3 Ltd v Easygroup Ltd & Anor

A descriptive word cannot remain registered for services merely because it has been extensively used within a family of composite marks. The proprietor must prove that consumers identify the services as originating from it because of the word itself, not because of the composite marks’ additional words, font or colour scheme.

Trade mark infringement depends on the context and date of the impugned use. Shared use of a descriptive common element, even with identical services, did not establish confusion, dilution, tarnishment or unfair advantage where actual confusion was sparse despite lengthy and substantial concurrent use.

A threats letter must be read as a reasonable recipient would understand it. Overbroad draft undertakings did not convert a threat concerning the supply of services under the identified sign into an actionable wider threat.

W3 Ltd operated online services matching people seeking and offering shared accommodation under EasyRoommate, related signs and European-language equivalents. Easygroup Ltd alleged infringement of its EU trade marks and passing off. W3 sought declarations of invalidity and revocation, and alleged unjustified threats.

The central issues were whether the EASY mark was valid for advertising and temporary accommodation, whether the various EasyRoommate signs infringed the remaining marks, and whether easyGroup’s pre-action letters made actionable threats under the Trade Marks Act 1994.

1. Judgment was substantially for W3. The EASY EU trade mark was invalid in respect of advertising and temporary accommodation. It described a quality of those services: that they were easy to purchase or use. easyGroup had not shown that consumers perceived EASY alone, rather than composite easy- marks in their distinctive get-up, as denoting commercial origin.

2. W3 had not infringed any remaining EU trade mark. For the plain-word signs, the relevant dates were their commencement of use, subject to the date on which each EU mark’s application was published. The Roof Logo required a separate assessment from June 2009 because it was materially different.

   The common element EASY was descriptive. The marks’ remaining elements differed, and the evidence of actual confusion was very limited despite prolonged, extensive concurrent use. The Court therefore found no likelihood of confusion, including in respect of the visually closer Roof Logo.

3. There was a link between some signs and EASYJET, and in relation to the Roof Logo also a stronger link with the relevant reputed marks. But easyGroup did not prove dilution, tarnishment or unfair advantage. In particular, there was no evidence of the required change in consumers’ economic behaviour, reputational harm, or an unfair transfer of image as at the relevant dates.

4. The European equivalents stood or fell with the UK signs because neither party supplied evidence justifying a materially different linguistic or cultural assessment. They did not infringe.

5. The passing-off claim failed. The statutory-acquiescence and chain-of-title issues were addressed only contingently. The Court held that serious, detailed and credible threats of proceedings were sufficient to stop the acquiescence period running, although this was unnecessary to the result.

6. The three letters did not contain actionable threats. A reasonable recipient would understand them as threatening proceedings for supplying services under EasyRoommate and its variants, which fell within the statutory permitted acts. Their wide draft undertakings did not enlarge the threats. W3’s UK mark remained valid, subject to the agreed restriction of its specification for non-use.

not stated in the judgment.