easyGroup Limited v Beauty Perfectionists Limited & Ors

For partial revocation of an EU trade mark, retail services may be limited to a coherent subcategory defined by their purpose and function, including a distinct retail channel such as in-flight retail. Online pre-orders may remain within that subcategory where goods are delivered during the relevant flight.

Infringement under Article 9(2)(b) requires a global assessment of similarity, services, context, consumer perception, distinctiveness and actual confusion. A family of marks requires actual market use of several marks displaying a common feature. Under Article 9(2)(c), a link, detriment or unfair advantage must be established by evidence and reasoned inference, not speculation.

easyGroup alleged that the defendants infringed two EASYJET EU trade marks by using easyCOSMETIC signs for online cosmetics, perfume and toiletries retail directed principally at Germany and Austria, with some UK sales.

The defendants counterclaimed for partial revocation of one mark for non-use and relied on an Article 14 defence. The trial concerned liability only. The principal issues were the proper specification following partial revocation, the relevant consumers and dates, the alleged easy family of marks, and infringement under Articles 9(2)(b) and 9(2)(c).

1. Partial revocation. The 001 mark was partially revoked under Article 58 by limiting the disputed class 35 services to in-flight retail services, effective 10 January 2020. In-flight retail was a coherent subcategory because its purpose and function differed from retail through shops, the internet or vending machines. Online pre-orders did not alter that conclusion where the goods were delivered to passengers during selected flights. The evidence of cosmetics and fragrance pre-orders was insufficient to establish genuine use for that channel.
2. Relevant consumers and dates. The relevant average consumers were in the UK, Germany and Austria. The assessment date was generally the commencement of use of the sign, subject to the publication date of the mark where use preceded publication. Limitation affected the period for which relief could be obtained, rather than requiring the infringement assessment to be redone at the limitation date. A change in the operating company did not require a new assessment where the evidence established continuity of the business and no materially different use of the sign.
3. Family of marks. The evidence established a family of marks for UK consumers, but not for German or Austrian consumers. The relevant common features included the prescribed orange colour, Cooper Black font and lower camel case lettering. The word “easy” alone was a common descriptive adjective and was not shown to guarantee an easyGroup origin.
4. Article 9(2)(b). There was no likelihood of indirect confusion. Similarities between the marks and signs were outweighed by their visual and conceptual differences, the context of the defendants’ use, the limited relevance of the family reputation to retail cosmetics, and the complete absence of genuine confusion despite extensive parallel trading. Honest concurrent use would, if necessary, have provided a further factor against infringement.
5. Article 9(2)(c). The easyCOSMETIC word sign and white/black sign did not create a link with the EASYJET marks. The orange/black sign arguably created a marginal link because of its colour, but there was no evidence of detriment to distinctive character or unfair advantage. The claims therefore failed. The Article 14 defence did not require determination.