easyGroup Limited v Cubico (UK) Limited

A pleaded family of trade marks cannot be established merely by showing repeated use of a common word. The proprietor must prove that the relevant public recognise the common feature as indicating an associated undertaking, on the pleadings and evidence in the particular case.

For infringement, similarity must be assessed globally and by reference to the actual context in which the sign is used. The absence of actual confusion becomes increasingly significant where parties have traded in parallel for a substantial period and there was a real opportunity for confusion to arise and be detected.

A materially different manner or context of use may require a fresh infringement assessment, but a new advertising medium does not automatically establish such a change. Similarity between goods or services remains necessary before likelihood of confusion can arise.

easyGroup sued Cubico in a liability-only trial for trade mark infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994, passing off, revocation of Cubico’s Earlier Mark for non-use, and invalidity of Cubico’s Earlier and Later Marks.

Cubico had traded since 2013 under “Easy Bathrooms” and related signs for bathroom goods and services. The central issues included the existence of an easy family of marks, the similarity of the signs and goods or services, likelihood of confusion or a link, and the effect of the parties’ lengthy parallel trading.

1. Preliminary pleading issue. Cubico’s defence, read as a whole, denied liability in relation to all the signs and pleaded honest concurrent use, the absence of confusion and a general denial. The court therefore declined to give judgment summarily in respect of Signs E, F and G.
2. Relevant dates. The first infringement assessment was summer 2013 and a further assessment was required after the material rebrand in mid-2015. The September 2023 television campaign did not, on the evidence, establish use in a materially different manner or context requiring another assessment.
3. Family of marks. The pleaded family comprised marks sharing “easy” followed by a suffix. The evidence did not show that the average consumer recognised that feature, without the distinctive branding elements required by the easy Brand Guidelines, as indicating association with easyGroup. The alleged family therefore did not exist as pleaded.
4. Section 10(2)(b). Similarity was assessed globally, by reference to the marks and signs as wholes and their actual context. Although the signs shared the word “easy”, the suffixes, stylisation, devices, capitalisation and conceptual differences reduced similarity. The services were only of low similarity. The prolonged parallel trading, extensive opportunity for confusion to arise and searches revealing no confusion were significant. There was no likelihood that consumers would believe Cubico’s services came from easylife or an economically linked undertaking.
5. The easy Windsurfing Mark could not support infringement because Ultra Tile was a professional protective product, not a household cleaning preparation. The s.10(2) claims therefore failed.
6. Section 10(3). The signs did not cause the average consumer to call the easylife Mark to mind. The claims for unfair advantage and detriment consequently fell away.
7. The claims for infringement and passing off were dismissed. The claim to revoke Cubico’s Earlier Mark for non-use failed because genuine variant use was shown. The invalidity claims also failed because the infringement and passing-off claims failed. It was unnecessary to determine the pleaded defences.