easyGroup Limited v Beauty Perfectionists Limited & Ors

Article 58 of the Regulation provides:

The principles applicable to determining whether there has been genuine use of a trade mark were summarised by Arnold LJ in easyGroup v Nuclei [2023] EWCA Civ 1247, §106 as follows (with further references, which are omitted here):

§107 of that judgment further noted that genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned; and that the smaller the commercial exploitation of the mark, the more necessary it is for the proprietor to produce additional evidence to dispel doubts as to the genuineness of its use: Case T-78/19 Lidl v EUIPO EU:C:2020:166, §§25 and 33. The trade mark proprietor bears the burden of proving genuine use of the mark: Cases C-720 and 721/18 Ferrari EU:C:2020:854, §§73–82.

As regards partial revocation under Article 58(2), there has been some debate in the English authorities as to whether there is a divergence between the EU approach and the approach of the English courts (see for example the comments of Arnold J in Stichting BDO v BDO Unibank [2013] EWHC 418 (Ch), §§53–56). In this case, since I am sitting as an EU trade mark court, to the extent that there is a difference it is the EU approach which must be applied.

In that regard, the Court of Appeal in Merck v Merck Sharp & Dohme [2017] EWCA Civ 1834, §§243–248, referred to the guidance of the General Court in Case T-126/03 Reckitt Benkiser (España) v OHIM (ALADIN) EU:T:2005:288, [2005] ECR II-2861, Case T-256/04 AG v OHIM (RESPICUR) EU:T:2007:46, [2007] ECR II-449 and Case T-258/08 Matthias Rath v EUIPO EU:T:2017:22, which it summarised as follows:

Further guidance has been given by the European Court in several more recent cases, including Case C-714/18 P ACTC v EUIPO EU:C:2020:573; Ferrari; and Cases T-221 and 242/22 Pharmaselect v EUIPO(LUTAMAX) EU:T:2023:858. In particular, those cases make clear that:

It is apparent from Thomson Holidays v Norwegian Cruise Line [2002] EWCA Civ 1828, §39, that the court’s determination of a fair specification of the goods or services, having regard to the use made of the mark, does not require the court to adopt a blue-pencil approach. The fair specification may instead be achieved by adding a qualification to the specification. In that case the specification of “arrangement and booking of travel and tours” was qualified by adding “words to the effect that the services were all for package holidays”. easyGroup did not dispute this as a permissible approach to the qualification of a class specification, as a matter of principle.

The defendants’ counterclaim for revocation did not concern the entirety of the registered class 35 services, but was limited to the following services (the disputed class 35 services):

The defendants’ initial primary claim for revocation of the 001 mark for the entirety of the disputed class 35 services was not pursued, in light of the evidence filed by easyGroup. That included extensive evidence of the in-flight retail sales made by easyJet during the period 2014–2020 in relation to food and drink, cosmetics, perfumes, other toiletries and sunglasses, and evidence of advertising on in-flight brochures and (for some but not all products) online.

Instead, the defendants focused on their alternative claim, which was for revocation of the 001 mark for the disputed class 35 services save in so far as those services were provided to passengers on an aeroplane, described as “in-flight retail”.

easyGroup did not seek to contend that the 001 mark had been used for the disputed class 35 services in any context other than retail sales of products provided on board an easyJet flight. It nevertheless opposed any “in-flight retail” qualification on two grounds. The first was that, in easyGroup’s submission, applying the criterion of the intended purpose of the goods or services does not permit a distinction to be drawn between different types of retail channels, such as in-flight sales. Ms Wickenden argued that such sales are no different to a purchase in an airport, in their intended purpose and use. She referred to ACTC which expressly rejected the definition of a subcategory by reference to the shop in which the goods are sold.

Secondly, easyGroup said that online pre-orders would fall outside the definition of in-flight sales, and that the sales by easyJet made via online pre-orders were not merely token but constituted genuine commercial use of the mark.

Neither party has been able to identify a case in which a subcategory of goods or services has been defined by reference to a particular retail channel. I do not, however, consider, that this precludes the definition of a coherent subcategory of in-flight retail services in the present case.

The starting point is that the registration for class 35 is not for the goods themselves, but for retail services connected with the sale of particular types of goods. Those services consist of bringing together goods manufactured and supplied by third parties for sale through a retail channel. The explanatory note to class 35 of the Nice classification states:

That classification expressly contemplates, therefore, that the service may be provided through different categories of retail channels. As Mr Keay pointed out, easyGroup itself registered the EU 003090958 mark, a figurative mark for easy.com, for (among others) class 35 services defined by reference to specific retail channels as follows:

While the purpose or use of the goods sold onboard an aeroplane may be no different to that of the same goods sold in an airport shop, the retail service provided onboard an aeroplane is functionally distinct from the retail service provided in, for example, a bricks and mortar retail shop or a vending machine. I agree with the defendants that the average consumer would plainly perceive a difference between the purpose and functioning of the two services.

As Ms Mullen explained when cross-examined on this point, the differences in the nature of an in-flight retail service, as compared with a retail shop, include the logistical operation of getting the goods onto the aircraft, the fact that the goods are sold by cabin crew who are required to have knowledge of the several hundred products on offer on the aircraft alongside doing their normal job as cabin crew, the existence of a captive customer base on a flight as compared with the requirement to attract customers into a retail shop, the very different way in which products are presented to the customer in an aircraft as compared with being displayed on a shelf in a shop, and the returns procedure (which requires customers to send products to easyJet’s relevant logistics partner for processing on easyJet’s behalf).

The provision of the disputed class 35 services on board an aircraft is therefore, in my judgment, a sufficiently distinct service in its purpose and function, by comparison with the sale of the relevant products through different retail channels such as retail shops or the internet, that it can be regarded as constituting a coherent subcategory of the class 35 retail services.

The remaining issue is whether a limitation of the registration of the 001 mark for the disputed class 35 services to in-flight retail sales is undermined by easyJet’s use of an online pre-ordering service. The defendants contended that the pre-ordering service did not affect the analysis, on the basis that:

easyGroup’s evidence regarding the development and extent of a pre-ordering service for its in-flight retail sales was given by Ms Mullen and Mr Santos. Ms Mullen was adamant that easyGroup had had no involvement in easyJet’s decision-making concerning its online pre-ordering service. Rather, she explained that the pre-ordering service was first introduced in around 2017, as an initiative of the in-flight retail team, and that decisions as to the rollout of the service were taken jointly by the in-flight retail team and Gate Retail, which supplied in-flight retail products to easyJet. The pre-ordering service was initially trialled with an offering of pre-orders for champagne and chocolates on flights around Valentine’s Day 2018. That was then expanded to other items during the course of 2019, with pre-orders for cosmetics and fragrances being launched in or around July 2019. Where pre-ordering was available, it enabled the booker to place an order online, for goods which would be delivered to them during their flight. The booker was notified of the pre-ordering facility by an email sent to them by easyJet. The pre-ordering service was only available on selected easyJet flights.

It appears, however, from the data provided that the only pre-orders of cosmetics and fragrances took place in the period from July to October 2019, with no further pre-orders of those products after that date (during the relevant period). Ms Mullen could not explain why that was the case, and did not know whether emails offering the pre-order service were still being sent to flight bookers after that time. There is no evidence as to the proportion of flights on which pre-orders were offered, or the basis on which those flights were chosen. Pre-orders of all products appear to have ceased in 2020.

During the four-month period in which pre-orders of cosmetics and fragrances were made, the pre-order sales were miniscule, amounting to a total of £2519 of cosmetic and fragrance products. That figure stands in marked contrast to the direct (i.e. non-pre-ordered) in-flight sales by easyJet of cosmetics and fragrances, amounting to over £28m for FY 2019, and over £10m for FY 2020 (with the reduction between those years no doubt accounted for by the Covid pandemic).

There is no evidence before me as to the full range of cosmetic and fragrance products on offer for pre-orders, and whether that range changed during the period during which those products were available for pre-order. The sales data provided, however, disclose sales of only 15 individual cosmetic and fragrance products, in relation to several of which only a single item was pre-ordered throughout the four-month period in which pre-orders were available.

I bear in mind that the use of the mark need not always be quantitatively significant for it to be regarded as genuine. There must, however, be real commercial exploitation of the mark on the relevant market, which is shown to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services: see §46.v) and vii) above. The smaller that commercial exploitation is, the more important it is for the trade mark proprietor to provide additional evidence as to the genuineness of its use: §47 above.

In the present case the evidence shows only tiny sales figures. Further evidence is therefore necessary, if easyGroup is to establish genuine commercial exploitation of the mark notwithstanding the extremely small volume of sales. There is, however, no evidence of the precise length of time for which the pre-order facility was in fact offered, or the proportion of flights on which it was offered, or the extent of cosmetic and fragrance products for which pre-ordering was available. In those circumstances, notwithstanding Ms Mullen’s credible account of the genesis of the pre-order initiative, taken as a whole the evidence is insufficient to establish a genuine attempt thereafter to generate retail sales for cosmetics and fragrances via online pre-ordering, by contrast with the direct in-flight sales of those products which generated very significant turnover during the same period of time.

Ms Wickenden argued that if the pre-orders of other products (such as champagne and food) were such as to amount to genuine commercial exploitation of the mark for services connected with those products, then it would be necessary to establish something different about the pre-orders of cosmetic and fragrance products, if the court is to conclude that the latter did not constitute genuine exploitation of the mark. I do not reach any conclusion as to the genuineness of the exploitation of the mark in relation to pre-ordering services for other products: that has not been put in issue by the defendants. I note, however, that the data provided show far greater pre-order sales of other products (particularly champagne) than of cosmetic and fragrance products. Beyond that, any attempt to address that issue would face similar evidential problems as arise in relation to the sales of cosmetic and fragrance products.

Furthermore and in any event, I do not consider that the existence of a pre-ordering facility is inconsistent with a limitation of the registration of the disputed class 35 services to in-flight retail services. Since pre-orders were only ever available to the bookers of selected easyJet flights, and the relevant products were delivered to the passengers onboard those flights, the service provided remained an in-flight retail service, even if the relevant products were pre-ordered and paid for online rather than onboard the aircraft. A specification limited to in-flight retail services would not, therefore, exclude online pre-orders.

It is therefore, in my judgment, appropriate to order partial revocation of the easyJet 001 mark, by limiting the specification of the disputed class 35 services to in-flight retail services.

By the time of closing submissions, it was common ground that the date from which any revocation should take effect is the day following the five-year period from the date on which the 001 mark was placed on the register. The 001 mark was placed on the register on 9 January 2015; the five-year period from that date therefore expired on 9 January 2020; revocation on the basis set out above will therefore take effect as of 10 January 2020.

The average consumer for the purposes of an infringement claim must be a consumer of the relevant goods or services who is both (i) familiar with the trade mark and (ii) exposed to, and likely to rely upon, the sign: Sky v SkykickUK [2018] EWHC 155, §275. The average consumer must therefore be a consumer of the goods or services in relation to which the signs complained of have been used: easyGroup v easylife [2021] EWHC 2150 (Ch), §200. This does not mean, however, that the average consumer should be defined by the particular characteristics of the defendants’ customers: easyGroup v Easyway [2021] EWHC 2007 (IPEC), §18.

There was, at least initially, a dispute between the parties as to the identification of the average consumer in the present case. The defendants’ position was that their websites are directed at Germany and Austria and use exclusively the German language. Their business has never been directed at the UK, and the defendants contended that such sales as were made to the UK were small and “mere spillover”. On that basis, the defendants’ position was that the average consumer in this case is an online purchaser of cosmetics in Germany or Austria, aged between 22 and 55 years.

easyGroup said that there was no reason to limit the average consumer to any particular age (indeed the evidence included an email from a consumer who said that they were 100 years old). easyGroup also contended that the consumer should be identified as simply a customer in the EU without reference to any specific location.

By the time of closing submissions, the position was essentially agreed between the parties. The defendants no longer contended that the average consumer should be limited to any particular age group. It was also clear that despite the German-language target of the defendants’ websites, the defendants had made non-negligible sales to the UK from October 2016 until February 2021 (even if those sales were small compared to the defendants’ business in Germany and Austria). The defendants therefore did not pursue an argument that the average consumer should exclude consideration of consumers in the UK. The claimants, equally, did not suggest that any consumers other than those in Germany, Austria and the UK were relevant, and there was no evidence of sales by the defendants to any other countries.

It was therefore common ground that (i) the infringement analysis should consider German/Austrian consumers and UK consumers, and that (ii) in so far as the court finds a difference in the likelihood of confusion between German/Austrian consumers and UK consumers, that might lead to a limitation of the territorial scope of any injunctive relief: Case C-223/15 Combit Software v Commit Business Solutions EU:C:2016:719. On that basis, it will be necessary to consider in due course whether the likelihood of confusion differs as between consumers in Germany/Austria and the UK, on the basis that UK consumers are more exposed to the easy family of brands than customers in Germany/Austria.

General principle. In general, the relevant date for assessment of whether the use of a sign infringes a trade mark is the date that the use of the sign commenced: Case C-145/05 Levi Strauss v Casucci [2006] ECR I-370, §§17–18; easyGroup v Easy Live [2022] EWHC 3327 (Ch), §121. Where, however, use of a disputed sign precedes the publication of the trade mark said to be infringed, the earliest possible relevant date for assessment of the claim of infringement is the publication date of the trade mark said to be infringed: W3 v easyGroup §§216–218.

Impact of limitation date. Where that date falls prior to the limitation cut-off date, Arnold J held at §95 of Walton International v Verweij Fashion [2018] EWHC 1608 (Ch) that the relevant date for the assessment of infringement is the limitation cut-off date:

That analysis was adopted by both parties in easyGroup v Nuclei, without further argument, and I followed it at §295 of my judgment in that case. At §§123–4 of easyGroup v Easy Live, however, Sir Anthony Mann accepted the submission of counsel for Easy Live that Arnold J’s reliance on his earlier comments in the BDO case was misplaced. What the relevant passage in BDO actually said was that the court should consider the position as at the dates on which the respective defendants commenced using the sign, reassessing if necessary taking the partial revocation into account, but with the qualification that infringements prior to the date six years before the claim form was issued are barred by limitation in any event.

On that basis, Sir Anthony Mann departed from what Arnold J said in Walton v Verveij and my statement in easyGroup v Nuclei following Walton. As he went on to explain at §§124–5:

Mr Edenborough contended that the analysis of Sir Anthony Mann is itself questionable in the light of the judgment of Arnold LJ on appeal in the easyGroup v Nuclei, which noted at §52:

Arnold LJ therefore acknowledged that the respondents’ notice had disputed the date for assessment of infringement. But he did not go on to decide the point, in the light of the other conclusions that he reached. I do not, therefore, think this takes the matter any further. The most recent consideration of the point remains that of Sir Anthony Mann. I should therefore in principle follow that judgment unless there is a powerful reason for not doing so: Willers v Joyce (No. 2) [2016] UKSC 44, §9. I am not persuaded that there is any good reason to depart from the analysis of Sir Anthony Mann; on the contrary, I respectfully agree with it, for the reasons he gave as set out above.

Transfer of business. A further question is whether a change in the company using the sign requires a new assessment of infringement to be made. In W3 v easyGroup, at §214, Arnold J repeated his conclusion in BDO that if the defendant uses the sign in a materially different manner or context at a later date, then a new global assessment must be made as of that date. He went on to reject arguments that the context of the use of the EasyRoommate signs had changed, and found that the relevant dates for assessment ranged from 2000 to 2005. It was irrelevant that during that period of time the EasyRoommate business was being conducted by the company DMISL rather than by the defendant W3, which did not take over the business until around October 2006. Similarly in Supreme Petfoods v Henry Bell [2015] EWHC 256 (Ch), §167, Arnold J took account of the use of the sign by both the defendant and its predecessors.

Mr Edenborough said that it was implicit in both Supreme Petfoods and W3 that the respective defendants were the successors in title to the earlier businesses. He contended that the same should not apply in a case where there is no evidence of a formal transfer of the business (such as a written sale or assignment agreement). I agree that in both Supreme Petfoods and W3 the court referred to the circumstances in which the defendants had acquired the predecessor businesses. I do not, however, accept that reference may only be made to the use by a predecessor company where there is evidence of a formal transfer of the business.

The relevant factor is whether a change in hands of the business leads to the use of the sign in a materially different manner or context. If it does, then a new assessment of infringement must be made. If it does not, i.e. if the evidence before the court establishes continuity in the use of the sign for a particular business operated by successive companies, then the transfer of the business does not require a new assessment of infringement to be made. It is not, for those purposes, necessary to go further and investigate the precise nature of the business transfer agreements between those companies: the material question is not the manner in which the business has transferred, but the use that has been made of the sign.

Honest concurrent use/due cause. Finally, in so far as reliance is placed on honest concurrent use as a factor to be considered in establishing whether there is an infringement, for the purposes of either Article 9(2)(b) or (c), or the question of whether the defendants’ use of the sign was “without due cause” for the purposes of Article 9(2)(c), it appears to be common ground that the application of these factors may change over time and as such must be assessed throughout the relevant period, beginning with the limitation cut-off date. To this extent, therefore, the assessment of infringement may ultimately change during the relevant period, such that liability arises for some but not all parts of the relevant period.

In the present case, the disputed signs have been used by the easyCOSMETIC business on various dates since 2008, as set out at §26 above. While the defendants did not operate the German and Austrian parts of the business until 2016 (BPL and Mrs Khammo) and 2018 (BIAL), Mr Foerste’s evidence is in my judgment sufficient to establish that there was a transfer of the business through successive companies from easyCOSMETIC Deutschland to the defendants. The absence of any details as to the precise contractual arrangements in each case does not undermine that conclusion. easyGroup does not contend that the changes in the operating entities led to the relevant easyCOSMETIC signs being used in a materially different manner or context. In principle, therefore, the assessment of infringement should have regard not only to the defendants’ use of the sign but also the use of the sign by their predecessors in the easyCOSMETIC business.

As to the publication dates of the trade marks relied upon by easyGroup:

In so far as it is necessary to consider honest concurrent use and due cause, it will be necessary to determine whether the application of those factors changed during the relevant period, i.e. from the limitation cut-off date of March 2014 onwards.

Where it is shown that the claimant has used a “family” of trade marks with a common feature, and the disputed sign shares that common feature, that may support the existence of a likelihood of confusion for the purposes of an infringement claim under Article 9(2)(b), or a link between the sign and the trade mark for the purposes of a claim under Article 9(2)(c).

The existence of a family of marks will be a relevant factor in assessing a likelihood of confusion, for the purposes of a claim under Article 9(2)(b), where two conditions are satisfied. First, the marks said to form part of the family must be present on the relevant market. This requires proof of the “actual use” of the marks belonging to the family. Secondly, the sign must be similar to the marks belonging to the family and must also display characteristics capable of associating it with the family: see Case T-287/06 Miguel Torres v OHIM [2008] ECR II-3817, §§79–81; Case T-301/09 IG Communications v OHIM EU:T:2012:473, §§23 and 86; Case T-175/22 Novartis v EUIPO EU:T:2023:135, §98.

In the case of a claim under Article 9(2)(c), where a family of marks is established, that is one of the factors to be taken into account in establishing whether there is a connection between the contested sign and the trade mark said to form part of that family: IG Communications v OHIM, §§22 and 106.

The consideration of the market presence of the marks said to form part of the family does not necessarily require all of those marks to be used in the market at the date of the assessment of infringement. Where a mark has been used in the market but is no longer used at the date of assessment, the question is whether it is likely to remain in the mind of the average consumer: easyGroup v Easy Live, §149.

easyGroup relies heavily on the existence and reputation of an “easy family” of marks including some or all of easyJet (and various sub-brands associated with easyJet), easyHotel, easyCar/easyRentacar, easyBus, easyGym, easyProperty, easyCoffee, easyEverything/easyInternetCafé, easy4men, easyValue, easyWatch, easyCruise, easyMoney, and easyCinema. easyGroup contends that the easy family of marks has a collective reputation in the UK and throughout the EU countries which is relevant in assessing the likelihood of confusion as between the 001 mark and the defendants’ signs.

easyGroup relies, in particular, on the common stylisation used for brand names across the easy family of marks, as set out at §23 above, namely the lower case word “easy” followed by the name of a service or product starting with an initial uppercase letter, the use of the Cooper Black font, and the use of the Pantone 021c orange colour.

For the reasons set out above, the relevant question is the use and reputation of the marks in Germany, Austria and the UK. It follows from my findings above on the relevant dates for assessment that in the context of the Article 9(2)(b) infringement claim, which refers only to the 001 mark, the relevant dates for assessment of a family reputation are 2012 for the easyCOSMETIC word sign and the orange/black figurative sign, and 2017 for the white/black figurative sign. In the context of the Article 9(2)(c) infringement claim, which refers to the 909 mark in addition to the 001 mark, it is also relevant to consider the family reputation as at 2008 and 2009, when the easyCOSMETIC word sign and the orange/black figurative sign were first used.

The consistent use of the stylisation described above across the “easy” brands is not disputed. It is also not disputed that easyJet had a substantial reputation in all three countries throughout the relevant period. Various sub-brands (such as easyKiosk and easyRider) have been used for ancillary services provided to easyJet customers, but there is no evidence that those brands have ever been used in a context separate from that of easyJet. As to the other brands relied on by easyGroup as forming part of its family of brands:

Accordingly, as regards Germany and Austria, the only relevant brands are easyJet, and possibly easyHotel (from 2011). The only other brand with any market presence in Germany was easyEverything/easyInternetCafé, for which there is no evidence of the extent of trading after two internet cafés opened in 2000–2001. There is, therefore, insufficient evidence of a market presence of that brand which would have remained in the mind of the average German or Austrian consumer by even the earliest relevant time point for the purposes of this case (2008/2009). In relation to the other brands relied on by easyGroup, there is no evidence of any market presence outside the UK.

It follows that, at the relevant points of time, the evidence establishes only one or at most (from 2011) two of the “easy” marks on the market in Germany or Austria. That is not sufficient for a finding of use on the market of a family of marks: Novartis v EUIPO, §100 (rejecting a “family” consisting of only two marks).

As regards the UK, easyGroup can rely on the existence of a family of marks at the relevant points in time, on the basis of the market presence of easyJet, easyHotel, easyCar/easyRentacar and easyBus (in these cases throughout the relevant period), together with easyGym (from 2011), easyProperty (from 2014), easyCoffee (from 2016) and easyMoney (from 2016). I also accept that in relation to the earlier part of the relevant period easyInternetCafé (as it became) might have retained enough of a lingering reputation to have remained in the minds of the average UK consumer. The other brands relied on by easyGroup were launched in the early 2000s, but there is no evidence of their continuing market presence by even the earliest relevant time point for the purposes of this case, or that they had been used on the market sufficiently close to that time that the marks would have been likely to have remained in the mind of the average UK consumer.

I do not accept easyGroup’s pleaded claim that its use of a family of marks has come to indicate to the average UK consumer, by any date relevant in these proceedings, that the use of a mark comprising “easy” before or as a prefix to a word or words alluding to goods and services was a reference to goods and services associated with, approved, authorised or endorsed by easyGroup alone, and no other entity. That is an extreme proposition which is not remotely established on the evidence before the court.

As the defendants have pointed out, the word “easy” is a common descriptive adjective and there are, and have been at all material times, numerous UK companies unconnected with easyGroup, which use a brand comprising the word “easy” before or as a prefix to a word or words alluding to goods and services. These include several brands in respect of which the courts have found there to be no infringement (EasyRoommate, easylife, Easy Live Auction and EasyOffices). Mr Anderson’s evidence also referred to other companies whose brand rights were eventually acquired by easyGroup, such as Easy Cleaning, Easy Voyage and Easy Food, and who had built up substantial businesses prior to those acquisitions.

It is, moreover, notable that easyGroup requires its licensees to adopt the common stylisation set out above. That is an indicator that a specific form of presentation is required to indicate to consumers that the relevant brand is a brand within the family of brands associated with easyGroup. While there is no dispute that easyGroup has gone to considerable efforts to promote and market the easy family of brands, its brand marketing invariably uses the specified stylisation.

No doubt recognising the problems with easyGroup’s pleaded case in this regard, Mr Edenborough’s closing submissions did not seriously pursue a claim to the repute of the word “easy” in itself before or as a prefix to another word. He did, however, submit that if “easy” conjoined with a second word was combined with use of the colours orange and white, that indicated that the brand was part of the easy family of brands. That claim was not pleaded and I do not accept it. It is not supported by the evidence before the court, which not only refers to the use of a specific shade of orange (Pantone 021c) but also the use of a specific font (Cooper Black) and lower camel case lettering as distinguishing characteristics of the easyGroup brands.

While I accept (as discussed further below) that it is relevant to take account of the association of the easy family marks with orange colouring in addressing the infringement issues, the evidence certainly does not establish that simply using the word “easy” conjoined with a second word, and using orange/white colours, is or was at any material time perceived by consumers in the UK or elsewhere as indicating an easyGroup brand. Indeed, Mr Edenborough did not identify any evidence at all supporting this proposition.

Article 9(2)(b) of the Regulation provides:

In order to establish infringement under Article 9(2)(b), six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public: Liverpool Gin Distillery v Sazerac [2021] EWCA Civ 1207, §7.

In the present case there is no issue as to conditions (i) to (v). It is therefore not disputed that the easyCOSMETIC signs are at least similar to the trade marks relied upon by easyGroup, and that the services provided by the easyCOSMETIC business are at least similar to the services for which the 001 mark is registered. The defendants did not suggest that the partial revocation of the 001 mark would make any difference to that analysis. The only disputed issue is therefore the likelihood of confusion under condition (vi).

Likelihood of confusion. The approach to the likelihood of confusion has been considered by the CJEU in numerous decisions. The Trade Marks Registry has adopted a standard summary of the principles established by those authorities, which has been approved by the Court of Appeal. The current version of the summary is set out in Iconix v Dream Pairs [2024] EWCA Civ 29, §10 as follows:

As set out above, where a family of marks is established, that will also be relevant to the assessment of the likelihood of confusion.

Direct and indirect confusion. There are two main kinds of confusion: direct confusion, where consumers mistake the disputed sign for the trade mark, and indirect confusion, where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark or from an undertaking which is economically linked to the undertaking responsible for goods or services denoted by the trade mark. The two types of mistake are very different in nature. Direct confusion is a simple matter of mistaking one mark for another, whereas in the case of indirect confusion the consumer recognises the difference between the marks but concludes, based on the common element(s) taken in the context of the use of the sign, that the sign comes from the same undertaking as, or an undertaking economically-linked to, the owner of the trade mark: Liverpool Gin Distillery v Sazerac [2021] EWHC Civ 1207, §§10–12, citing Iain Purvis QC in LA Sugar v Back Beat (O/375/10).

Actual use in context. It is necessary to consider the actual use of the sign complained of in the context in which the sign has been used: Kitchin LJ in Specsavers International Healthcare v Asda [2012] EWCA Civ 24, §87. Likewise, where a trade mark is not registered in colour but has become associated with a particular colour or combination of colours through extensive use in that colour or combination of colours, that may be taken into account as a relevant factor in assessing the likelihood of confusion with the disputed sign: Case C-252/12 Specsavers International EU:C:2013:497, §§37, 39–41.

Evidence of actual confusion. In easyGroup v Nuclei, I made the following comments regarding the relevance of evidence of actual confusion:

On appeal in easyGroup v Nuclei, Arnold LJ commented at §77 that:

Distinctiveness/colour. The more distinctive a trade mark becomes, the greater will be the existence of the likelihood of confusion: Case C-251/95 Sabèl EU:C:1997:528, §24, and more recently see e.g. Case T-564/22 Pierre Balmain EU:T:2023:851, §78. The use of colour may form part of the assessment of the distinctiveness of a trade mark. Where the trade mark has been used in a particular colour or combination of colours, such that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, and the disputed sign uses the same colour or combination of colours, that can support the existence of a likelihood of confusion even if the trade mark is not registered in colour: W3 v easyGroup §236, citing Case C-252/12 SpecsaversInternational, §41.

Honest concurrent use. Honest concurrent use of the sign complained of is not a defence to a claim for trade mark infringement under Article 9(2)(b), but may be relied upon as a factor in the infringement analysis. Thus if the claimant establishes a prima facie case of likelihood of confusion, the burden shifts to the defendant to establish that, by virtue of its honest concurrent use, there is nevertheless no adverse effect on any of the functions of the trade mark. In exceptional cases, even if there is a small level of actual confusion between the trade mark and the sign, honest concurrent use may lead to the conclusion that there has been no infringement if most of the relevant class of consumers have come to understand that the trade mark and the sign denote different trade origins. That does not require specific positive evidence of consumer education, but can be inferred from many years of parallel trade on a substantial scale: Arnold LJ in Match v Muzmatch [2023] EWCA Civ 454, §§115–16 and 119–20, and in easyGroup v Nuclei, §§78 and 103.

It is not suggested that the average consumer (whether in the UK, or in Germany/Austria), would mistake the defendants’ signs for the 001 mark. Rather easyGroup’s case is one of indirect confusion with the 001 mark, namely that at the relevant times the average consumer would have believed that easyCOSMETIC was a business that was economically linked to the undertaking responsible for the services registered under the 001 mark.

Level of attention of average consumer. In assessing the likelihood of indirect confusion, the defendants submit that the average consumer is likely to pay an above average level of attention, because cosmetics and fragrances are products applied to the face or body, in respect of which consumers tend to be knowledgeable and typically have strong preferences. The defendants also rely on the fact that their websites include products from luxury brands. Those submissions might carry weight if the defendants themselves produced the relevant cosmetics and fragrances, but they do not do so; rather, their service is in providing the websites on which the products are sold, and there is no evidence suggesting that consumers will pay an above average degree of attention to the branding in that context.

Distinctive character of the 001 trade mark. The defendants accept that the word “Jet” in the 001 word mark has inherent distinctive character in respect of retail services. The “easy” element of the mark, however, has no inherent distinctive character: it is a descriptive word, which indicates that the services are easy to use. It is common ground that the 001 mark has acquired a reputation and enhanced distinctive character in respect of airline services, but easyGroup does not rely on the registration of the mark in respect of these services for the purposes of its Article 9(2)(b) claim. Rather, it relies on the registration of the mark in respect of retail services connected with the sale of cosmetics and fragrances. easyGroup has not, however, pleaded any reputation or enhanced distinctive character of the 001 mark in respect of those services.

easyGroup does, however, plead that the easy family of marks has a substantial reputation, which it contends enhances the distinctiveness of the 001 mark. As already discussed, in respect of the perception of the average German or Austrian consumer I do not consider that any reliance can be placed on the easy family of marks. As regards the average UK consumer, while easyGroup can rely on the existence of a family of marks, the family reputation does not merely rest on the use of the word “easy” in the brand name. Rather, its distinctiveness relies heavily on the common stylisation elements of the colour and font prescribed by easyGroup. Moreover, by 2012 (the relevant date for the assessment of Article 9(2)(b) infringement by the unstylised easyCOSMETIC word sign and the orange/black figurative sign) the only brands which I have found to form part of the easy family in the UK were easyJet, easyHotel, easyCar/easyRentacar, easyBus and easyGym. With the exception of easyGym, all of these were travel related; none of these are established to have had any reputation in the retail of consumer goods. By 2017 (the relevant date for the assessment of the white/black figurative sign) the easyProperty, easyCoffee and easyMoney businesses had launched. Even then, however, none of these related to the retail of consumer goods such as cosmetics and fragrances.

Comparison of services. It is not disputed that the defendants’ services fall within the class 35 services for which the 001 mark is currently registered, such that the relevant services are identical. From the date of revocation (10 January 2020) the comparison is between in-flight retail of cosmetics and fragrances under the 001 mark, and the defendants’ online retail of cosmetics and fragrances through their German and Austrian websites. Those services are similar but only to a moderate degree, given the very different nature of the retail channels used in each case. As the defendants rightly point out, in-flight retail services are perceived as ancillary to the core transport services provided by the relevant airline, and the average consumer would not expect to see airlines engaging in the online retail of goods outside the context of the flight.

Comparison of signs. The comparison is between the defendants’ disputed signs and the 001 mark. In making that comparison, easyGroup submitted that the average consumer would place more emphasis on the “easy” element of the 001 mark and the defendants’ signs, because:

I accept (i) as a general proposition. I do not accept that this would lead to greater emphasis being placed on the “easy” element of the mark and signs in this case, however, given that both easyJet and easyCOSMETIC are relatively short words, and in circumstances where “easy” is, as I have already found, a common descriptive adjective. I do not accept (ii) and (iii). Both “easy” and “cosmetic” are common descriptive words which are recognisable in Germany/Austria as well as in the UK. The material before me does not provide any reason to consider either word as being inherently more striking than the other, whether in the UK or German/Austrian context. I accept (iv) in relation to the orange/black and white/black signs used by the defendants. As regards (v) and (vi), I accept that the use of orange for the word “easy” in the orange/black sign tends to emphasise that word, by comparison with the black of COSMETIC. The same is not, however, true for the white/black sign, where orange colouring is entirely absent. Mr Edenborough’s submission that the sign might be “tainted by association” with orange used elsewhere on the defendants’ website was wholly unconvincing.

I only partially accept (vii): I accept that the 001 mark is associated with the use of a particular orange colour, and that as regards the average UK consumer (but not the average German/Austrian consumer) the distinctiveness of the “easy” element of the 001 mark has been further enhanced through its use in the context of other “easy” family businesses, in which the specified orange colour (Pantone 021c) is also used as a common stylistic element. For the reasons set out above, I do not accept that consumers regard the word “easy” as a guarantee of origin, whether when associated with the colour orange or not.

There are therefore some factors which indicate that, to some extent, the word “easy” might be slightly more dominant than the word COSMETIC in the defendants’ two figurative signs. This is, however, more significant for the orange/black sign than the white/black sign, and I do not accept all of easyGroup’s submissions in that regard.

In that context, I accept that there are some visual and conceptual similarities between the 001 mark and the defendants’ signs. The defendants’ signs all start with “easy”, which I accept might be slightly more dominant in the figurative signs. The slightly thicker font used for the word “easy” in the figurative signs bears some (modest) similarity to the Cooper Black font used for the easy family of marks. The orange colouring in the orange/black sign is also somewhat similar to the orange stylisation extensively used for (and therefore associated with) the 001 mark. The orange stylisation is also used by the easy family of marks, which would be of some added relevance to the UK consumer.

Those similarities are, however, in my judgment offset by the visual and conceptual differences between the marks. Most obvious is the clear difference between EASYJET and easyCOSMETIC. While I have found that the slightly thicker font (for both figurative signs) and orange colouring (for the orange/black sign) somewhat emphasises the word “easy”, attention is drawn to the word COSMETIC by the capitalisation of that word and the fact that in both figurative signs that word is presented in black, which is a clear contrast to the word “easy” in orange or white. The use of capitalisation for COSMETIC is also a clear point of differentiation compared to the 001 mark, which is consistent with the common stylisation of the easy family of marks uses lower camel case lettering.

The defendants refer to other differences between their figurative signs and the easy family stylisation, which I consider to have less significance in this regard in the overall impression produced by the figurative signs. While the orange colour used on the orange/black sign is a paler orange than the Pantone 021c used for the easy family of brands, I accept that the average consumer will have imperfect recollection of the precise colour associated with the easyGroup brands. The defendants also emphasise the different font used by easyCOSMETIC and the easy family of brands, but again the average consumer is not likely to have a good recollection of precise font stylisation details. I have already rejected the submission that the average consumer will have an above average level of attention in this context.

There is a clear aural difference between EASYJET and easyCOSMETIC, but I agree with easyGroup that it is unlikely that the aural aspect of the mark will play a significant role in the purchasing process, as the signs will be encountered predominantly on screen.

Context of use of the defendants’ signs. The context in which the defendants’ signs are used tends to point away from a likelihood of confusion. It is apparent from the defendants’ websites that the business is that of a German or Austrian cosmetics retailer. There is (and was, during the relevant period) nothing on those websites to indicate any connection with the easyJet airline business. easyGroup places some reliance on the use of orange design elements on parts of the defendants’ websites. I consider that to be too remote from the defendants’ signs for that to have any impact on the likelihood of confusion between the defendants’ signs and the 001 mark.

Evidence of actual confusion. The defendants and their predecessors have been trading alongside easyJet for a very long time (by now over 15 years), on a very substantial scale. easyJet’s sales figures for cosmetics and fragrances show sales growing from £10m in FY 2014 up to over £28m in FY 2019, before dropping off somewhat in the following years due no doubt to the Covid pandemic. The easyCOSMETIC business grew very quickly from its first trading year in 2009, to an annual turnover of over €2m in 2010, almost €17m by 2014 and over €72m by 2019. In terms of the volume of orders, in 2019 the easyCOSMETIC business distributed over 1m packages, the vast majority of which (over 900,000) were to Germany. In principle, therefore, there has been ample opportunity for evidence of actual confusion to emerge, if there was a likelihood of confusion.

In the present case easyGroup searched its internal files comprising around 17 million emails, over 13 million files and over 2 terabytes of data in total dating from 2003, as well as easyJet customer email files for the period 2016–2020, and searches of social media sources. Those extensive searches produced just two emails which are relied upon by easyGroup as instances of confusion. The defendants, for their part, searched almost 18 million emails from their customer service accounts, revealing a small number of emails referring to easyJet. easyGroup says that these various communications provide “some evidence” of actual confusion. The defendants say that none of the emails in fact establishes confusion on the part of the sender. None of the authors of the emails were called to give evidence. As Arnold J commented in W3 v easyGroup, §254,it is therefore necessary to be cautious in trying to interpret these communications.

I will start with the emails sent to easyGroup. The context for these is that, as described in W3 v easyGroup, §116 and easyGroup v Nuclei, §323, since at least November 2002 there has been a “brand thieves” section on easyGroup’s www.easy.com webpage where easyGroup solicits evidence of confusion from members of the public with the following request:

That request produced the following two emails relied upon by easyGroup:

Turning to the emails sent to the defendants in which easyJet is referenced, and which are relied upon by easyGroup as instances of confusion:

There is therefore no evidence of actual confusion by anyone (whether a customer of the defendants or otherwise), despite the many years of parallel trading.

easyGroup said that this could be explained by the fact that indirect confusion would not be likely to come to light, particularly given the scale of the actual overlap between easyJet’s retail of cosmetics and fragrances and the easyCOSMETIC business.

I do not accept that explanation. The defendants’ business has been operated on a very significant scale, as set out above, and it is apparent from the customer emails which have been disclosed that it is very straightforward for the defendants’ customers to make a complaint or raise a query, by sending an email to the easyCOSMETIC customer service team at service@easycosmetic.de or service@easycosmetic.at. The easyJet sales figures likewise show a multimillion pound annual turnover in cosmetics and fragrances, from their in-flight sales. More generally, as set out above easyGroup positively solicits evidence of confusion from members of the public. In those circumstances, if there was indeed a likelihood of indirect confusion on the part of the average consumer, one would expect to find at least some instances of genuine confusion in the extensive searches conducted by the parties through millions of customer service emails. The fact that there are no examples at all is a factor suggesting that confusion was not likely.

Likelihood of confusion overall. The matters set out above disclose factors that point in both directions. The “easy” element of the 001 mark (which easyGroup contends is the dominant component of that mark) has no inherent distinctive character, and the family reputation is not relevant for German/Austrian consumers. For UK consumers the family reputation is relevant, although none of the easy family brands are related to the retail of consumer goods such as cosmetics and fragrances. There is some visual and conceptual similarity between the 001 mark and the easyCOSMETIC signs, and the font style of the figurative signs and the orange colouring in the orange/black sign bears some similarity to the stylisation of the easy family of marks, and the colouring associated with the 001 mark. I also bear in mind that the defendants’ services were identical to the registered class 35 services for the 001 mark, until January 2020, and of moderate similarity thereafter. Those similarities are, however, in my judgment outweighed by the clear visual and conceptual differences between the marks, and the context of use by the defendant which also points away from a likelihood of confusion. It is also significant that despite extensive searches of many millions of emails on both sides, and many years of parallel trading, no instance of genuine confusion has been identified.

Overall, taking account of all of those factors, I do not consider there to be a likelihood of indirect confusion between the defendants’ signs and the 001 mark.

For completeness, I note that the German Patent and Trade Mark Office (DPMA) in Beauty Perfectionists and easyGroup v UWI (14 June 2023) considered that the sign

Honest concurrent use. In light of my conclusions above, it is not necessary to consider honest concurrent use of the defendants’ signs. Had it been necessary to do so, however, this would have been a further relevant factor pointing away from a conclusion of infringement under Article 9(2)(b), at least during the later part of the relevant period. The launch of the easyCOSMETIC business predated the registration of the 001 mark by over two years. Mr Ganzer’s unchallenged evidence was, moreover, that the inspiration for the easyCOSMETIC name and logo design came from his design work for another company, easyLIMITED. As I have already found, “easy” is a common descriptive adjective. There is nothing to suggest that the defendants’ designs were chosen on a basis that was not honest.

easyGroup was aware of the easyCOSMETIC business since at least 2011, but after an initial complaint in May 2011 it then took no further action until June 2019. That is indicative of the fact that the defendants’ business was having no real impact on easyGroup or its licencees; and there is certainly no evidence that easyGroup or any of its licencees have been harmed by the easyCOSMETIC business. easyGroup argued that it was justifiable for it to have reconsidered the risk and damage to its intellectual property rights as the scale of the business increased since 2011. In 2011, however, the defendants’ turnover was already over €3.7m, and it was therefore already a substantial business. The business continued to grow rapidly, reaching almost £17m in 2014, over €55m in 2017 and over €72m in 2018, during all of which time easyGroup remained silent. (It appears that the turnover figures include some Swiss turnover, but the likely scale of that does not change the analysis.) It is also relevant that, as set out above, there is no evidence of customer confusion between the easyCOSMETIC and EASYJET signs during the many years in which they have been used concurrently, with trade on a very large scale on both sides. It is therefore apparent that the defendants’ honest concurrent use has not in any way adversely affected the functions of the 001 mark.

It may also be inferred, from the facts set out above, that most of the relevant class of consumers have over time come to learn that EASYJET and easyCOSMETIC have different trade origins. Even if this may not necessarily have been the case by 2014 (the limitation cut-off date, and therefore the start of the relevant period for these purposes) when easyCOSMETIC had only been trading for six years, I consider that by the later part of the relevant period the length of time for which easyCOSMETIC had been in business, and the scale of its trade, would have been sufficient to indicate the education of consumers as to the different trade origins of the mark and signs. I do not, however, need to reach a definitive conclusion on this in light of my findings above.

Conclusion. I conclude that the defendants have not infringed the 001 mark, pursuant to Article 9(2)(b), by their use of the easyCOSMETIC word sign and the orange/black and white/black figurative signs.

Article 9(2)(c) of the Regulation provides:

In order to establish infringement under Article 9(2)(c), nine conditions must be satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, namely, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause: Match v Muzmatch, §55.

In the present case, there is no issue as to conditions (i) to (vi). The disputed conditions are (vii) to (ix). In relation to condition (viii), easyGroup focused on (a) and (c), namely the alleged detriment to the distinctive character of the 001 and/or 909 marks, and the alleged unfair advantage being taken of the distinct character or repute of those marks.

Link between sign and trade mark. There is a link between the sign and the trade mark if the sign would call the trade mark to mind for the average consumer: Case C-252/07 Intel v CPM EU:C:2008:655, [2008] ECR I-8823, §63; Lidl v Tesco [2024] EWCA Civ 262, §21. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case: Intel §30; Lidl v Tesco §21.

Those factors will include (i) the degree of similarity between the mark and the sign; (ii) the nature of the goods or services for which the mark and sign were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; (iii) the strength of the earlier mark’s reputation; (iv) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and (v) the existence of the likelihood of confusion on the part of the public: Intel §42. As set out above, where a family of marks is established, that will be relevant in considering these factors.

Detriment to distinctive character. Detriment to the distinctive character of the earlier mark is caused when the mark’s ability to identify the goods or services for which it is registered and used, as coming from the proprietor of that mark, is weakened by use of the later sign. That is the case when the earlier mark, which used to cause an immediate association with the goods and services for which it is registered, is no longer capable of doing so: Intel §29. The more immediately and strongly the earlier mark is brought to mind by the disputed sign, the greater the likelihood that there is detriment to the distinctive character of the mark: Intel §67.

Proof of detriment to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the disputed sign, or a serious likelihood that such a change will occur in the future. It is, however, not necessary to show that the proprietor of the disputed sign draws real commercial benefit from the distinctive character of the earlier mark: Intel §§77–78.

Evidence of actual detriment is not required; rather, it is sufficient to show a serious risk of detriment, on the basis of deductions. Such deductions must not, however be the result of mere suppositions, but must be founded on all the circumstances of the case, including the nature of the trade in issue and the normal practice in the relevant commercial sector: Case C-383/12 Environmental manufacturing v OHIM EU:C:2013:741, §§42–43; Comic Enterprises v Twentieth Century Fox [2016] EWCA Civ 41, §118.

Unfair advantage. The approach to determining whether use of a sign takes unfair advantage of a mark was set out in Case C-487/07 L’Oréal v Bellure [2009] ECR I-5185. In particular:

Due cause. Where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark, or a serious risk that such injury will occur in the future, it is for the proprietor of the disputed sign to establish that there is due cause for the use of that sign: Intel §39. The concept of due cause involves a balancing between the interests of the proprietor of a trade mark in safeguarding its essential function, and the interests of other economic operators in having signs capable of denoting their products and services: Comic Enterprises §123.

Relevant factors in determining whether there is due cause for the use of the sign include how the sign has been accepted by, and what its reputation is with, the relevant public, the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered, and the economic and commercial significance of the use for that product of the sign which is similar to that mark: Case C-65/12 Leidseplein Beheer v Red Bull EU:C:2014:49, §60.

Link between sign and trade mark. For the purposes of the assessment under Article 9(2)(c), easyGroup relies on both the 001 and the 909 EASYJET word marks. easyGroup accepts that the link must involve the calling to mind of those marks and the reputation of those marks, as opposed to merely a vague recognition or familiarity with the word “easy”. easyGroup submits, however, that a consumer thinking about the easy family is likely to have some knowledge of easyJet as the key part of that family.

I do not consider that the easyCOSMETIC word sign would create a link to the EASYJET marks in the mind of the average consumer. The sole linking factor is the use of the word “easy” at the start of the marks and the sign. I have already found that there is not a likelihood of confusion for this or the other two disputed signs, and as part of that analysis the visual and conceptual similarity is (of the three disputed signs) weakest for the easyCOSMETIC word sign. The defendants’ services of retailing cosmetics and fragrances are, moreover, very different to the airline services for which EASYJET has a reputation and enhanced distinctive character. As noted above, easyGroup has not pleaded any reputation or enhanced distinctive character of the 001 mark in respect of the retail of cosmetics and fragrances, and the 909 mark is not registered for cosmetics and fragrances.

The analysis of the white/black sign is not, in my judgment, materially different. The only additional factor in relation to that sign which might be said to create a link is the slightly thicker font used for the word “easy”, which (as I have already found) has some modest similarity to the Cooper Black font used for the easy family of brands. That might have marginal significance for the UK consumer. However, as also discussed above, any such significance is in my judgment counterbalanced by the other visual elements which create clear differentiation between the white/black sign and the EASYJET marks (including any recognition of the easy family of marks), namely the difference in colour and capitalisation.

The only one of the disputed signs which might arguably create a link to the EASYJET marks is the orange/black sign, given the stylisation used by the easy family of marks and the association of the EASYJET marks with the colour orange. I accept that the orange colour used for the word “easy”, which is somewhat similar to the orange stylisation used for the EASYJET marks and more generally the easy family of marks, might just tip the balance.

easyGroup also relies upon the fact that in easyGroup v Easyway and easyGroup v Easy Live a link was found between EASYJET and the signs used by the defendants. The assessment in each case is, however, inevitably multifactorial and fact sensitive. In easyGroup v Easyway, easyGroup relied on word marks for EASYJET, EASYCAR, EASYBUS and EASYHOTEL, and the judge had found a likelihood of confusion on the basis of, among other things, a high degree of similarity between the relevant services, given the travel-related nature of the marks and the fact that the defendants’ business was also travel-related. In the present case, I have not found a likelihood of confusion, and for the purposes of the assessment under Article 9(2)(c) the focus is on the reputation of the EASYJET marks, which is not said to extend to retail of cosmetics and fragrances. There is therefore a clear distinction between the services provided by the defendants and the services for which the EASYJET marks have a reputation. In easyGroup v Easy Live, particular emphasis was placed (at §214) on the finding that the defendant sought to create a link with the easy family in the mind of the average consumer, when choosing to modify the sign to make it closer to the easy family branding. That factor is, again, not present in this case: as already noted, Mr Ganzer’s unchallenged evidence was that the inspiration for the easyCOSMETIC name and logo design came from his previous design work for easyLIMITED.

There is therefore, in my judgment, arguably a link between the orange/black sign and the EASYJET word marks, based on the additional feature of the orange colour used for the orange/black sign. I do not consider a link to arise in the case of the white/black sign or the easyCOSMETIC word sign.

Detriment to distinctive character. In the light of the findings above, a claim of detriment to the character of the marks is entirely implausible. easyGroup’s submissions on detriment rely on the likelihood of confusion, but I have not found any such likelihood. Rather, any link that might arise is confined to the orange/black sign, on the basis of the orange colour used for that sign. There is no explanation of how a link created by little more than the colour of the orange/black sign could give rise to detriment to the EASYJET marks. There is no evidence of any change in the economic behaviour of consumers, nor does easyGroup put forward any credible basis for a finding of a serious likelihood that such a change will occur in the future. Indeed, easyGroup does not even explain what change it says is likely to occur.

easyGroup’s submissions on detriment seem instead to turn on speculation as to the damage to the “strength of the family”, if third parties use the same or significantly similar brand stylisation. In the present case, however, the stylisation of the easyCOSMETIC signs is neither the same nor significantly similar to that of the easy family of brands. In any event the question is not detriment to the family reputation but detriment to the distinctive character of the two EASYJET marks relied upon.

Moreover, the only specific example given by easyGroup to explain its claim of detriment is hopeless. easyGroup says that a customer who may have had a positive experience with easyHotel, leading that customer by virtue of association to be more likely to choose easyJet for a flight, might then see the defendants’ signs and become less sure whether easyHotel is in fact part of the same family as easyJet. The consequence, it is said, is that “the immediate association of distinctiveness of easyJet as part of the ‘easy’ family is eroded”. That submission is fanciful in the extreme. There is no basis whatsoever – whether in the evidence, or by any logical inference from the facts – for the suggestion that a customer seeing any the defendants’ signs might then become unsure of the link between easyJet and easy family brands such as easyHotel, given my findings as to the lack of likelihood of confusion and the marginal nature of any link between the defendants’ signs and the easyGroup marks. Moreover, even if there were any such doubt, the leap from that to a claim of erosion of the distinctiveness of the EASYJET marks is a complete non sequitur.

Unfair advantage. easyGroup’s case on unfair advantage fares no better. The only attempt at explaining how a cosmetics retail business could take advantage of marks with a reputation in airline services is the assertion that the registration of the 001 mark for the retail of cosmetics demonstrates that airline services and cosmetics retail services can be provided together. But that is a long way from explaining how the defendants’ business could derive any advantage from the reputation of the EASYJET marks for a completely different kind of service.

The high point of easyGroup’s analysis was its assertion that the formation of a link allows the defendants to “trade on the trust that people have in the easy family of brands” such that customers might choose the defendants’ services when they might not otherwise have done so. That is, however, pure speculation without any support whatsoever in the evidence. It is particularly implausible given the marginal link identified above.

Due cause. In light of my conclusions above, it is not necessary for me to consider due cause. Had it been necessary to do so, the factors set out above in relation to honest concurrent use would also have been relevant to consideration of this point.

Conclusion. I conclude that the defendants have not infringed the 001 or 909 mark, pursuant to Article 9(2)(c), by their use of the easyCOSMETIC word sign and the orange/black and white/black figurative signs.

It is not necessary to consider the Article 14 defence in light of my conclusions above.

My conclusions are as follows: