Easygroup Ltd v Easy Live (Services) Limited & Ors

For infringement under Trade Marks Act 1994, s.10(2)(b), similarity between signs and identity or similarity of services do not by themselves establish liability. The court must make a global assessment through the eyes of the average consumer, considering the distinctive and dominant elements of the marks, the conceptual message conveyed, the nature of the services and any evidence of actual confusion.

Common descriptive elements may contribute only modestly to similarity. Long coexistence without substantial evidence of relevant confusion may reinforce the conclusion that there is no real likelihood of confusion. Honest concurrent use is a factor in the infringement assessment, rather than a freestanding defence.

Easygroup Ltd sued Easy Live (Services) Limited and its directors for infringement under Trade Marks Act 1994, s.10(2)(b). The claim concerned the defendants’ use of EASY LIVE, EASY LIVE AUCTION, EASY LIVE (SERVICES) LTD and related logos in connection with online auction advertising, catalogues and live auction broadcasting.

Easygroup relied on an Easylife stylised mark and an Easylife word mark. The defendants counterclaimed for revocation of the stylised mark and invalidity of the Easylife word mark. Easygroup also sought invalidity of the defendants’ EASY LIVE AUCTION mark. The central issues were genuine use and variant forms, service similarity, likelihood of confusion, honest concurrent use, and the related invalidity claims.

1. Revocation. The five signs relied on by Easygroup were variant forms of the Easylife stylised mark under Trade Marks Act 1994, s.46(2). The dominant element was the word easylife. Changes to fonts, colours, straplines and figurative elements did not alter the mark’s distinctive character. The mark therefore was not liable to total revocation.
2. The court applied the approach in Merck KGaA v Merck Sharp and Dohme Corp to partial revocation. The relevant question was whether the services for which use was proved formed coherent subcategories capable of independent treatment. Use of the mark for advertising space supplied through printed catalogue inserts did not constitute a distinct subcategory of advertising services because the purpose remained the provision of advertising. Partial revocation of some unused class 35 bringing-together services and class 39 services was left for the form of order hearing.
3. Infringement. The defendants’ signs were visually and aurally similar to the Easylife marks to a moderate degree. The similarity arose principally from the common word easy. The conceptual difference between easylife and easylive, the additional auction terminology, and the absence of the triangular tick device materially reduced the likelihood of confusion.
4. The defendants’ advertising service was identical to the registered advertising services. Their catalogue and auction broadcast services were identical or highly similar to the registered bringing-together and retail services. Nevertheless, the global assessment disclosed no real likelihood of confusion. The extensive use of the parties’ signs, coupled with only a small number of weak or equivocal examples, indicated that the average consumer did not regard the businesses as connected.
5. Honest concurrent use was not a freestanding defence. It did not arise because there was no likelihood of confusion, although the period of coexistence supported that conclusion. The infringement claims under s.10(2)(b) consequently failed.
6. The invalidity claims concerning the Easylife word mark and the defendants’ mark failed or fell away because they depended on a likelihood of confusion. The court also expressed doubts, in an academic context, about the correctness of the inequitable-rights analysis in Croom’s Trade Mark Application in light of Marussia Communications Ireland Limited v Manor Grand Racing Limited, but left that issue unresolved.

Easygroup’s claims were dismissed. The defendants’ counterclaims for invalidity of the Easylife word mark and revocation of the Easylife stylised mark were dismissed, subject to further submissions on possible partial revocation.