easyGroup Limited v Easy Live (Services) Limited & Ors

For variant use under Trade Marks Act 1994, the comparison asks whether differences between the mark as registered and the mark as used alter its distinctive character. It is not necessary that omitted elements be negligible.

For partial revocation, independent subcategories are identified principally by purpose and intended use. For services, intended mode of use is relevant, and different advertising media may constitute separate subcategories.

Conceptual similarity must be assessed independently of the goods or services, although the context of actual use may affect consumer perception in infringement proceedings. Visual and aural similarities cannot be neutralised by conceptual differences unless conceptual counteraction applies. Enhanced distinctive character may extend beyond the precise goods or services used.

easyGroup appealed against the dismissal of its claims that Easy Live (Services) Limited had infringed the Easylife Stylised Mark and Easylife Word Mark, and that the Defendants’ Mark was invalid. The appeal arose from the judgment of Nicholas Caddick KC, sitting as a Deputy High Court Judge, reported at [2024] EWHC 2282 (Ch).

The Defendants cross-appealed against the judge’s partial dismissal of their counterclaim to revoke the Easylife Stylised Mark for non-use. The central issues were whether the signs used by Easylife were acceptable variants, how the advertising services specification should be partially revoked, and whether EASY LIVE created a likelihood of confusion with either Easylife mark.

The Court of Appeal allowed both the appeal and the cross-appeal in part. The appellate review of the multi-factorial assessments was governed by the principle that intervention requires an error of law or principle, including a material gap in logic, inconsistency or failure to consider a material factor: Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8 and Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25.

1. Variant forms. Section 46(2) of the Trade Marks Act 1994 requires identification of the differences between the mark as registered and the sign used, followed by an assessment of whether those differences alter the registered mark’s distinctive character. The likelihood-of-confusion rule concerning negligible components applies to a different comparison and serves a different purpose. Signs 1–3 and 5 were acceptable variants. The judge was also right to assess the issue objectively rather than defer to evidence that the tickball was important to the proprietor’s branding: Electrolux Ltd v Electrix Ltd (No 2) (1954) 71 RPC 23.
2. Partial revocation. Independent subcategories are identified principally by purpose and intended use. For services, intended mode of use is relevant. Different advertising media may therefore constitute independent subcategories even where their purpose is the same. Printed advertising and promotional services formed an appropriate subcategory, and the registration was amended to read providing advertising or promotional space in printed publications. The court may formulate its own fair specification, provided the parties receive procedural fairness: Sky Ltd v SkyKick UK Ltd [2024] UKSC 36.
3. Likelihood of confusion. Conceptual similarity must be assessed from the semantic content of the marks and signs, without using the services to determine that meaning: European Union Intellectual Property Office v Equivalenza Manufactory SL [EU:C:2020:156]. EASY LIVE could be perceived as a verb as well as an adjective. The judge therefore erred in treating it as conceptually distinct from easylife. The visual and aural similarity, similarity of services and evidence of typographical mistakes established a likelihood of confusion. Conceptual difference was not a case of conceptual counteraction. The same conclusion applied to both Easylife marks for EASY LIVE, while the other signs did not infringe.
4. Other matters. Retail or bringing-together services do not require the service provider itself to conclude the eventual sale. Enabling consumers to select and compare third-party services may suffice: Praktiker Bau- und Heimwerkermärkte AG C-418/02 and Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt [EU:C:2014:2069]. Enhanced distinctive character normally has a penumbra extending beyond the precise goods or services used, although its extent is factual.

The appeal was allowed to the extent of substituting a finding of infringement of both Easylife marks by EASY LIVE, and was otherwise dismissed. The cross-appeal was allowed to the extent of amending the advertising and promotional services specification, and was otherwise dismissed.

• Court of Appeal (Civil Division) allowed the appeal and cross-appeal in part, substituting a finding of infringement by EASY LIVE and amending the specification of the Easylife Stylised Mark.
• High Court of Justice, Intellectual Property List (ChD) dismissed the infringement and invalidity claims and partially dismissed the counterclaim for revocation: [2024] EWHC 2282 (Ch).