easyGroup Limited v Jaybank Leisure Limited

For trade mark infringement under section 10(2) of the Trade Marks Act 1994, likelihood of confusion is assessed globally through the eyes of the average consumer, having regard to the actual context of the alleged use. A black-and-white registration is registered for all colours, but the proprietor’s established use of a particular colour may still be relevant where it has enhanced the mark’s distinctiveness. Absence of actual confusion is neutral where there was limited opportunity for confusion to be detected. Use of a mark on a website does not constitute use for services supplied by another undertaking merely because the website links to, or supports, that undertaking. A defence under section 11A must take account of the qualifications in section 46, including the three-month proviso concerning late commencement or resumption of use.

easyGroup alleged that Jaybank infringed its black-and-white series trade mark containing the word EASYHIRE by using EASIHIRE for vehicle rental and sales services. Jaybank denied infringement and relied on the non-use defence in section 11A of the Trade Marks Act 1994.

The parties agreed that the relevant services were identical or very similar and that the signs were aurally identical. The principal infringement issue was likelihood of confusion, including the significance of differences in font, capitalisation, spelling and colour. The court also had to determine whether easyGroup had made genuine use of the mark in the relevant five-year period and whether the pleaded website uses were use for the registered services.

1. Infringement. The court applied the settled global assessment under section 10(2) of the Trade Marks Act 1994, considering the average consumer, imperfect recollection, the visual, aural and conceptual similarity of the marks, and the context of the use. The services were identical or very similar, and the signs were aurally and conceptually identical. Differences in font, capitalisation and the substitution of “i” for “y” did not prevent a likelihood of confusion. EASYHIRE was sufficiently distinctive to function as a trade mark.
2. Although the registered mark was black and white and therefore protected in all colours, its habitual use in orange could be relevant in the global assessment if it had acquired enhanced distinctiveness. It had not been used by the relevant date, February 2021, so colour had no influence on the assessment. The absence of actual confusion was neutral.
3. Non-use. Section 11A had to be read together with section 46, including the proviso to section 46(3). Use beginning within the three months before the infringement action could not defeat the defence unless the statutory preparation condition was met. On the assumed revocation date of 23 April 2024, easyGroup therefore needed to establish genuine licensed use before 23 January 2024.
4. Use on the easyHire.mobi website did not qualify. The site merely linked users to easyCar, which provided access to services from numerous rental companies. Responsibility for those services was not transferred back through the chain of websites to easyHire.
5. Use on easyHire.biz and easyToolhire concerned franchising and the provision of technology to hire businesses, not the rental of vehicles or related information services relied upon by easyGroup. The section 11A defence therefore succeeded. The claim was dismissed.