Easygroup Limited v Easy Live (Services) Limited & Ors.

In a trade mark and passing off dispute, a proprietor must prove genuine use for the relevant goods or services. Use confined to an independent subcategory does not preserve a broader specification. For comparable marks created from EU marks, UK use may preserve the mark where the five-year period expired before IP completion day. Infringement is assessed at first use of the sign, unless later use is materially different. A platform may provide a distinct advertising service even when advertising forms part of a wider platform. Under the Trade Marks Act 1994, the section 10(2) claim failed for lack of similarity of services. Section 10(3) infringement was established where intentional branding created a link and unfair advantage. Passing off failed for lack of damage.

Easygroup alleged that Easy Live (Services) Limited and its directors infringed registered EASY marks and committed passing off through signs used for an online auction platform. Easygroup also sought invalidity of the defendants’ registered mark. The defendants counterclaimed for revocation of parts of Easygroup’s specifications for non-use. The court considered genuine use, partial revocation, comparable marks following Brexit, the relevant dates for infringement, service similarity, reputation, unfair advantage and passing off. The central issues were whether the claimant had preserved the relevant specifications and whether the defendants’ signs created an actionable association with the EASY marks.

1. Revocation and specifications. The court applied the genuine-use principles in Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch) and the partial-revocation approach in Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1834. The evidence had to be assessed globally, but the wider advertising, promotional and business-information categories were not preserved by limited use for licensees. The contested categories were revoked, subject to the surviving data communications services under the Easy Networks mark.
2. For the comparable easyProperty mark, Schedule 2A to the Trade Marks Act 1994 did not require use in the European Union outside the United Kingdom. The word includes in the relevant provision retained its ordinary meaning. UK use could therefore preserve the mark where the five-year period had expired before IP completion day.
3. The court held that infringement is assessed at the first use of the allegedly infringing sign, unless a later material change requires a fresh assessment. Limitation restricts the remedy period; it does not reset the substantive assessment date. The court respectfully declined to follow the approach attributed to Walton International Ltd & Anor v Verweij Fashion BV [2018] EWHC 1608 (Ch) and Easygroup Ltd v Nuclei Ltd [2022] ETMR 31.
4. Under section 10(2), there was no relevant identity or similarity between the defendants’ platform, information and payment activities and the surviving registered services. The claim therefore failed without the need to assess confusion. The court nevertheless held that active listing of auctions, links and catalogues under the platform banner could constitute a distinct advertising service. Substance, rather than contractual labelling, governed.
5. Under section 10(3), Signs 2 and 3 created a link with the easyJet family and took unfair advantage of its distinctive character or repute. The intentional movement of the branding towards the EASY style was significant. Sign 4 had moved sufficiently away from that presentation and did not infringe. There was no material detriment to reputation or distinctive character.
6. The passing-off claim failed because, although Signs 2 and 3 involved a misrepresentation of connection, the claimant had not established a realistic likelihood of damage. The decision on revocation of the defendants’ own mark was reserved for further submissions or a separate hearing.

The claim form was issued on 8 October 2019. The trade mark claim was narrowed, the easyProperty claim was added on 9 February 2022, and the revocation counterclaim was amended on 22 February 2022 to include Easy Networks. No appeal or lower-court decision is stated in the judgment.