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EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court

EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.

EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.

As to W3’s claim, the claimant recognised that the letters of complaint could not in themselves be considered a threat of action in relation to trade mark infringement, as the letters only addressed the services provided by EasyRoommate (which were not considered to constitute actionable threats under the relevant UK legislation that was in force at the time). However, it argued that, as the draft undertakings and draft particulars of claim attached to the letters addressed the use of any mark in relation to either goods or services that could be confused with the EASY mark, the threats made were broad enough in nature so as to come under the threats regime. This claim was dismissed by the judge, who stated that under the reasonable person test, the complaints in question were confined to those set out in the letters.

As to EasyGroup’s counterclaim, Arnold J commented that the trade mark EASY was descriptive in nature and therefore needed to have acquired a distinctive character through use.  He concluded that this had not occurred for the relevant industries i.e. advertising / temporary accommodation services because the EASY mark was always used in conjunction with an affix and would not be recognisable, in respect of goods and services falling within those specific categories, on its own. As such, he declared that its registration for those sectors was invalid.

In addition, Arnold J stated that, on the relevant dates, (i) EasyGroup had failed to establish through use, that EASY was both a distinctive and dominant component of EasyGroup’s EU trade marks, and (ii) there was no evidence that EasyGroup’s reputation had extended to the degree that EasyRoommate would have either benefitted from any transfer of image from, or gained an unfair advantage through an association with, EasyGroup. For these reasons, he concluded that the EasyRoommate mark was not an infringement of EasyGroup’s IP rights.

The key takeaways from this case are two fold. Firstly, given the size and wide-reaching brands of EasyGroup, it is clear that the threshold that must be met to prove distinctiveness through use is significant, particularly when the use of a mark in practice deviates from the form in which it is strictly registered. Secondly, although the judgment was decided under the old UK threats regime (such rules having been updated in October 2017), it continues to provide useful guidance under the new regime as to the types of correspondence that could qualify as a claim for groundless threats.

Copyright 2020 K & L GatesNational Law Review, Volume VIII, Number 32


About this Author

Andrew W. Gilchrist, Contentious Intellectual Property Matters Attorney, KL Gates, Law firm
Senior Associate

Andrew Gilchrist is a senior associate in the firm's London office. He concentrates his practice on intellectual property matters, both contentious and non-contentious, and advises regularly on the development, exploitation, infringement and protection of all types of intellectual property, know-how and information technology assets, and on data protection and privacy, in a diverse range of sectors. He has extensive experience advising on licensing, commercial agreements, software and systems development agreements, and outsourcing, as well as the management and...

Oliver Bates, KL Gates Law Firm, London, Intellectual Property Attorney
Trainee Solicitor

Mr. Bates is a trainee lawyer in both the Antitrust, Competition & Trade Regulation group and Intellectual Property, Technology and Sports department of the firm’s London office. He previously gained experience in the Corporate and White Collar Crime departments