Easygroup Ltd v Empresa Aerea De Servicios Y Facilitation Logistica Integral SA (Easyfly SA) & Anor

Permission to serve proceedings out of the jurisdiction requires a serious issue to be tried, a good arguable case within a jurisdictional gateway, and England and Wales to be clearly or distinctly the appropriate forum. For trade mark infringement, accessibility of a foreign website is insufficient by itself; the court must assess objectively whether it is targeted at UK or EU consumers. Services supplied abroad may nevertheless be marketed or offered in the UK or EU. A failure to make full, frank and fair disclosure on a without-notice application may justify setting aside permission, even where the non-disclosure was innocent. Under the EU Trade Mark Regulation, jurisdiction against a defendant domiciled in another Member State is distinct from jurisdiction based on the place of infringement, and the latter ordinarily limits relief territorially.

easyGroup brought interlocutory claims against a Colombian domestic airline and its president for UK and EU trade mark infringement, passing off and conspiracy. It also sought to join a French aircraft manufacturer in respect of a press release issued in the UK and aircraft branded and flown in France and Spain.

The Colombian defendants applied to set aside permission to serve them out of the jurisdiction, alternatively seeking strike-out or transfer. The proposed French defendant opposed joinder. The court considered whether the pleaded acts raised serious issues to be tried, whether the relevant jurisdictional gateways were satisfied, whether procedural defects justified setting aside the order, and whether the English court had jurisdiction over the claims against the French manufacturer.

1. Service out. The applicable requirements were: a serious issue to be tried on the merits; a good arguable case that the claim fell within a gateway; and England and Wales being clearly or distinctly the appropriate forum. The merits threshold was the real prospect of success test. It did not require a good arguable case on the substantive merits.
2. Trade mark use and targeting. Website accessibility alone did not establish UK or EU use. The court had to assess objectively all relevant circumstances, including the website’s content, the nature of the business, the services offered, and evidence of targeting. There was a serious issue concerning the website, electronic tickets and direct marketing. The fact that the underlying flights were supplied only in Colombia did not provide an answer: services could be marketed or offered to UK consumers even where supplied abroad.
3. The press release and the public flying of aircraft bearing the Easyfly signs also raised serious issues of trade mark use. The press release might be de minimis, but that issue did not defeat arguability at the jurisdiction stage.
4. Other claims. There were serious issues concerning passing off, including misrepresentation, dilution of goodwill and possible user damages. The evidence also supported an arguable case that the president had procured or directed the relevant acts and could be liable as a joint tortfeasor or conspirator.
5. Without-notice order. The original application had not fairly disclosed that Easyfly operated only domestic Colombian flights, nor clearly identified the specific acts relied upon or Easyfly’s denial of responsibility for broker sales. Although the failure was not deliberate, the order granting permission to serve out was set aside. Other alleged procedural defects caused no material prejudice.
6. ATR. The joinder application formally failed because the proceedings against the Colombian defendants had been set aside. If the proceedings had continued, the English court would have lacked EUTMR jurisdiction over ATR for acts in France or Spain. It would have had jurisdiction over the UK press release, but permission to amend for that claim would have been refused as de minimis.