“Our clients are anxious to resolve this matter without recourse to litigation and therefore request that you provide them with signed undertakings in the form attached. In any event our clients fully reserve their rights.”
“(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because— (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.” (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”
“The registration of a trade mark may be revoked on any of the following grounds— (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; …”
“… specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”
“299. … The closest that the specifications of the UK528A and EU509 marks come to Nuclei’s business are the specifications for the hire or rental of temporary office space. Nuclei does not, however, itself hire or rent office space; rather, it acts as a broker for the rental of serviced offices, providing search facilities for potential consumers to find office rentals provided by the companies listed on Nuclei’s website. 300. The brokerage of office rental is of course … related to the activity of hiring or renting office space, but that is not sufficient to engage the provisions of s. 10(1)/Article 9(2)(a). … 301. … a service consisting of the brokerage of serviced office space is not an ancillary feature of the rental of the office space itself, but is a different service entirely. [Counsel for easyGroup] argued that anyone visiting the Easy Offices website would understand that this was a ‘service of office rental’. I disagree. While the Easy Offices site advertises offices to rent, nothing on the website indicates that Easy Offices itself rents or hires offices. Quite the contrary, the website makes clear that it is a portal to enable people to find office space. …”
“Q. You are in a unique position, because you are between the operators and the people who want to rent. A. Correct. Q. Looking at it purely from the perspective of the people who want to rent, would you agree that this site is offering rental services or not? A. Rental services? Q. Are you renting property, how would someone describe the service that you carry out? A. We have offices to rent.”
“34. As with all issues in trade mark law, the answer to disputed questions is normally provided by considering the purpose of a trade mark which, broadly speaking, is to operate as a guarantee of origin to those who purchase or use the product. In principle, therefore, and in the absence of any authority cited to us which is directly in point, I would consider that the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods. … 35. In the present case I cannot therefore see any a priori reason for excluding the hirer of a taxi from the class of consumers whose perceptions it is necessary to consider. The guarantee of origin which the mark provides is directed not only at purchasers of taxis but also at members of the public, such as hirers of taxis. The hirer is a person to whom the origin function of the vehicle trade mark might matter at the stage when he or she hires the taxi. I entirely accept that the hirer is also a user of taxi services, so that any dissatisfaction with the taxi or its performance is likely to be taken up with the taxi driver or his company. But if, for example, the taxi were to fail for reasons not associated with the taxi service, it would be on the manufacturer identified by his trade mark that the hirer would, or might, wish to place the blame. …”
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“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and (k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”
“New home page is not converting as well as old, as mentioned, I think this is more to do with people thinking the old website was Stelios more than this website is.”
“… while I have found that there was no genuine use of the easyOffice marks after 2012, the easyOffice business had by then enjoyed over five years of continuous trading alongside the Easy Offices business, and Nuclei itself had been building up its customer base since 2000. There was therefore ample opportunity for evidence of confusion to have emerged, if confusion was likely. In those circumstances the lack of evidence of confusion is, I find, a material factor suggesting that confusion was not likely.”
“330. Honest concurrent use. The circumstances that I have described above give rise, in my view, to a strong case of honest concurrent use. Nuclei adopted the name Easy Offices several years before easyGroup applied for the UK528A and EU509 marks, and long before the easyOffice business was launched. As described … above, when contacted by easyGroup in 2001 Mr Abrahams agreed not to use an orange and white livery (or any ‘confusingly similar’ livery), and his logos thereafter moved well away from the design elements that characterised the ‘easy’ company brands. There is, as set out above, no evidence of consumer confusion between the EASYOFFICE and EASYOFFICES marks/signs over the course of a number of years when they were used concurrently. Nor is there any evidence before me suggesting that Nuclei’s use of the EASYOFFICES signs has taken unfair advantage of or has been detrimental to the character or reputation of the easyGroup marks. 331. Overall assessment. In relation to the third mark in the UK528A series and the EU376 mark, the assessment of infringement is very straightforward: the designs of the marks are very different to Nuclei’s logos; that combined with the lack of evidence of confusion clearly indicates that there was no likelihood of confusion. For those marks I have no hesitation at all in finding that there was no infringement, without needing to consider honest concurrent use. 332. In relation to the other marks, the position is more finely balanced, and there are factors pointing in both directions. Overall, however, I have come to the conclusion that despite the similarity of both the marks/signs and the services offered by the parties, the absence of any concrete evidence of confusion in circumstances of over five years of side-by-side use indicates that confusion was not in fact likely; and to the extent that there was confusion, it was such as should be tolerated given the honest concurrent use by Nuclei of the EASYOFFICES sign. I therefore conclude that there was also no infringement in relation to the remaining easyGroup marks.”
“… I consider that there would have been a considerable likelihood that an actual or potential Nuclei customer seeing the UK528A or EU509 word marks or the black and white figurative mark would be deceived into thinking that the source of the services offered under the mark was connected with Easy Offices, leading either to damage to Nuclei’s trade (given the related nature of the specifications of the marks) or at least damage to Nuclei’s goodwill.”
“19. For the tribunal to determine in relation to what goods or services there has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. … 22. … it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public.”
“It is well established that the existence of some retail sales of a product is not itself sufficient to demonstrate genuine use of a trade mark: i) InCase C-141/13 P Reber v OHIM EU:C:2014:2089 the CJEU upheld the conclusion of the Board of Appeal of OHIM that chocolate sales from a single shop in Bad Reichenall in Germany did not amount to genuine use of a trade mark. ii) InCase T-250/13 Naazneen Investments v OHIM EU:T:2015:160 the General Court upheld the conclusion of the Board of Appeal of OHIM that the sale of 15,552 bottles of energy drink was insufficient to prove genuine use, in the context of the overall size of the market for beverages. iii) In Decision O-222-16 In re Nike Innovate (JUMP MAN) (18 April 2016 ), Mr Alexander QC, sitting as the Appointed Person, upheld the Hearing Officer’s conclusion that sale of 55,000 pairs of shoes from a shop in Bulgaria (with ‘very modest’ trade sales to Romania) was insufficient to constitute genuine use having regard to the market context. He commented, in particular, at §94 that there was “tiny proven use in the context of the economic market as a whole in a single shop in a single mall in a single town in one EU state.”
“The Croydon premises are relied upon to establish use of all three of the easyGroup trade marks. The arrangement with Instant Offices is, however, only relevant to the use of EU376, since the service provided by Instant Offices, namely a brokerage service for serviced office space, fell outside the specifications for the UK528A and EU509 marks. (I address the specifications for the marks in more detail below in my discussion of infringement.)”
“In the present case, the easyOffice business was not a new entrant in a niche sector. It had been in business since 2007 as part of a very successful family of brands supported by sophisticated marketing capabilities; and it was operating in a mature sector with established markets for the provision of serviced offices across all of the major European cities. An Instant Offices report produced in 2012 stated that in the UK alone over 31 million square feet of serviced office space was then available across a total of 2105 open centres. In that context, evidence of revenues of just over£1,000 generated by four customers from June to September 2014, who used between them a handful of desks on a single floor of a Croydon hotel building, accompanied by only desultory marketing efforts during the relevant period, does not come close to showing genuine use of the mark for the purpose of creating or preserving market share in this sector.”
“282. [Counsel for easyGroup] accepted that there was no witness who could interpret the evidence, but submitted that I should treat the material as a ‘mosaic’ and look it as a whole, rather than dismissing particular aspects of the evidence for lack of supporting documentation. It is of course necessary to consider all of the available evidence together. But that does not mean that gaping holes can be filled with pure speculation. In the present case there is no solid and objective evidence at all of the nature of the use of the trade mark or the extent of the trade generated on the basis of the mark. 283. In those circumstances the evidence cannot justify a conclusion that there was ‘real commercial exploitation’ and thus genuine use of the easyGroup marks between May 2014 and May 2019, having regard to the principles set out in the cases to which I have referred above.”