EasyGroup Limited v Nuclei Limited & Ors

For double-identity trade mark infringement, a sign must be strictly identical with the registered mark. A plural ending which creates visual, aural and conceptual differences that the average consumer would notice prevents identity, even if the mark and sign are very similar.

A brokerage website may use its sign in relation to the advertised service if consumers would regard it as having some responsibility for that service. Likelihood of confusion remains a global assessment. A sustained absence of actual confusion, despite a real opportunity for it to arise and be detected, may materially indicate that confusion is not likely. Genuine use requires solid and objective proof of real commercial exploitation. Sparse bookings, limited marketing and an unsubstantiated website or commission arrangement will not establish it.

EasyGroup Limited v Nuclei Limited & Ors concerned EASYOFFICE trade marks and Nuclei’s longstanding use of EASYOFFICES for an online business which introduced customers to suppliers of serviced office space.

EasyGroup alleged infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994 and the corresponding provisions of the EUTM Regulation. Nuclei counterclaimed for revocation for non-use. Bacon J dismissed the infringement claim and revoked the marks for non-use: [2022] EWHC 901 (Ch).

EasyGroup appealed. The central issues were whether the sign and services satisfied the requirements for infringement, whether there was a likelihood of confusion after concurrent use, and whether EasyGroup had proved genuine use during the relevant five-year period.

1. Appeal dismissed. The court upheld the dismissal of the infringement claim and the revocation of the trade marks for non-use.

2. Under section 10(1) of the Trade Marks Act 1994 and Article 9(2)(a) of the EUTM Regulation, EASYOFFICES was not identical to EASYOFFICE. The additional “S” created differences in appearance, sound and concept which the average consumer would notice. Strict identity is not established merely because consumers might occasionally confuse two highly similar singular and plural expressions.

3. The judge had erred in treating Nuclei’s failure itself to hire office space as conclusive on the question whether it used its sign in relation to that service. Nuclei’s website advertised office space to consumers, and many such consumers would perceive EASYOFFICES as having some responsibility for the quality of the advertised service. Accordingly, Nuclei used the sign in relation to a service identical to one within the relevant specifications. That finding could not establish double identity because the sign was not identical.

4. The judge’s finding of no likelihood of confusion under section 10(2) was open to her. The court’s corrections concerning service identity and the degree of mark similarity did not materially alter the global assessment. The marks were of relatively low inherent distinctiveness and consumers would generally pay moderately high attention. More than five years of side-by-side trading afforded ample opportunity for confusion to occur and to be detected. The absence of actual confusion was therefore a material factor against a likelihood of confusion.

5. Honest concurrent use is not a free-standing defence. It may be relevant within the global infringement assessment, but it was unnecessary to decide whether consumers had been educated to distinguish the businesses because the primary finding was that confusion was not likely.

6. EasyGroup failed to prove genuine use. Genuine use requires real commercial exploitation, assessed in its market context and proved by solid, objective and sufficiently specific evidence. The very limited Croydon bookings, desultory marketing, absence of later booking evidence, and inadequately explained Instant Offices commission material did not show use capable of creating or preserving market share. Advertising through an unquantified website did not cure those evidential deficiencies. The judge was therefore entitled to revoke the marks from the dates specified in her order.

• Court of Appeal (Civil Division): Appeal dismissed. The court upheld the dismissal of the infringement claim and the revocation of the trade marks for non-use.
• High Court, Intellectual Property List (Chancery Division): Bacon J dismissed EasyGroup’s infringement claim and revoked the relevant trade marks for non-use: [2022] EWHC 901 (Ch).