Easygroup Limited v Easyfeetstore OÜ & Ors

For trade mark infringement, the common presence of a descriptive word does not ordinarily establish similarity, a family of marks, or a likelihood of confusion. Enhanced distinctive character must be demonstrated by evidence of trade mark use which identifies commercial origin. Under s.10(3) of the Trade Marks Act 1994, reputation is a knowledge threshold assessed by reference to the sector in which the mark has actually been used. A link between the sign and the mark remains necessary. Alleged detriment requires evidence of an actual change, or a properly evidenced serious risk of a change, in the relevant consumers’ economic behaviour. Unfair advantage requires corresponding evidence concerning the defendant’s customers. Broad retail-service specifications and unquantified use do not, without more, establish genuine use for particular goods.

easyGroup sued Easyfeetstore OÜ, Andriy Klishyn and Easyfeet Inc for trade mark infringement under ss.10(2) and 10(3) of the Trade Marks Act 1994, passing off, and invalidity of Easyfeetstore’s EASYFEET registration. The defendants sold orthotic and orthopaedic insoles in the United Kingdom under Easyfeet and Easyfeetstore signs.

The court considered enhanced distinctive character, the alleged family of ‘easy’ marks, similarity, the average consumer, reputation, link, detriment, unfair advantage and genuine use under s.11A. The central questions were whether the signs created a likelihood of confusion or a link with easyGroup’s marks, and whether the EASYFEET registration was invalid.

1. Disposition. The claims for infringement, passing off and invalidity of the EASYFEET registration were dismissed.
2. Distinctive character and family of marks. Distinctive character is the ability of a mark to identify trade origin. Enhanced distinctive character is a judge-made concept reflecting increased distinctiveness generated by trade mark use. It must be established by evidence of use as a trade mark, not merely by evidence of sales scale. The evidence established significant enhancement for easyJet, modest or very modest enhancement for some other marks, and no recognised family of marks consisting of ‘easy’ plus any descriptive or allusive suffix.
3. Section 10(2). The relevant average consumer was an actual or potential purchaser of orthotic insoles available online, rather than a medical professional or a consumer of each mark’s registered goods and services. The only common element was the descriptive word ‘easy’, which had no significant distinctive character. There was no relevant visual, aural or conceptual similarity, insufficient similarity of goods or services in most comparisons, and no evidence of actual confusion. The global assessment therefore disclosed no likelihood of confusion.
4. Section 10(3). Reputation is a binary knowledge threshold. The relevant public is the sector likely to have encountered the goods or services in respect of which the mark was actually used. Although easyJet and easyFood had reputations, no link was established between any mark and the defendants’ signs. In any event, no detriment was shown because there was no pleaded or evidenced change in consumers’ economic behaviour. No unfair advantage was shown because there was no evidence of a change in the economic behaviour of the defendants’ customers.
5. Genuine use and invalidity. The evidence established genuine use of the easyFoodstore Mark for retail services. Limited use of the easylife device Mark was established, but not genuine use for orthotic insoles. The relationship between the law on retail-service specifications and genuine use under s.11A was insufficiently argued, and the court did not decide it. The invalidity application consequently failed because it was agreed to stand or fall with the infringement and passing-off claims.
6. The court found that Mr Klishyn would have been jointly liable for Easyfeet’s acts had Easyfeet been liable. The unresolved targeting issue concerning Easyfeet’s United States trading did not require determination.