“210. If it matters, I do not consider that any link would be created between Sign 1 and any Easy group sign. The only linking factor would be presence of the word ‘Easy’, and I do not consider that that would be enough. The services provided are very different, and there is no association between the services description in the mark (Live Auction) and any component part of any Easy mark …. Since this point is not likely to be material to the outcome I do not dwell on it. 211. So far as Signs 2A, 2B and 3 are concerned, I do consider that a link would be formed at least with the easyJet mark and in the mind of the average consumer who is a member of the buying public. By 2010 it had a considerable market presence and the impact of the mark is enhanced by other members of the family, as to which see above. True it is that the services are different, but the average consumer would know, from the family that I have found to exist, and indeed the easyMoney mark as well, that the word ‘easy’ was associated with services other than travel services, even though he/she would know that easyJet’s services and those of ELA were apparently not the same. I take into account that the Easy branding was almost invariably white text on an orange background, and ELA’s was white text on a blue background, but despite that I still think it likely there would be a link. Nor does the presence of the hammer (while it is there) provide a distinguishing factor removing what would otherwise be a link. 212. It is true … that no evidence of anyone making the link was produced. … I have borne this point in mind. 213. Nor have I ignored the fact … that there are lot of trading entities using the word ‘easy’ in their title, followed by a description of goods or services. That is an important factor in the debate, which I have weighed. 214. Despite those factors, I have concluded, with the assistance of an additional matter which I am just about to mention, that a link is likely. That additional matter is what I have found Mr Burnside to have intended when he brought Sign 2 into existence. I consider that he sought to create a link with the easyJet family in the mind of the average consumer when he chose to bring his sign closer to the Easy brand sign. As I have pointed out, he was given to making allusions to other products when it suited him, and I consider that he did the same here. He accepted he was aware of easyJet at the time, and knew it was a ‘big’ entity, which must mean he was aware of the easyJet mark. He probably intended, in a manner he would describe as ‘cheeky’ (his word to characterise his other references to branding), to ‘call to mind’ the easyJet branding, to use the phrase appearing in the authorities. That being his intention, it hardly lies in his mouth, or the mouth of his company, to say it was completely unsuccessful, and I find that it would have been and was successful, albeit to a subtle extent. This feature is elaborated, with authorities, in my later section on passing off. 215. All that applies to Signs 2 and 3. Mr Burnside’s original motivation carries over from Sign 2 to 3. However, it does not apply to Sign 4 which has moved away from the easyJet presentation. The signs are sufficiently dissimilar that I do not consider that any link will have been formed in the minds of consumers.”
“… if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?”
“It is said in this case that the Defendants intended to deceive – not that the goods were calculated even innocently to deceive – but that there was a fraudulent intention on the part of the Defendants. That is a material fact which would be weighed duly and to which doubt great weight would be attached by any Court if it were established, because no Court would be astute when they discovered an intention to deceive, in coming to the conclusion that a dishonest defendant had been unsuccessful in his fraudulent design. When once you establish the intent to deceive, it is only a short step to proving that the intent has been successful, but still it is a step even though it be a short step. To any such charge there must be, however, two conditions. The first is that it ought to be pleaded explicitly so as to give the defendant an opportunity of rebutting the accusation of intent. The second is that it must be proved by evidence.”
“The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public.”
“… if the intention to deceive is found, it will readily be inferred that deception will result. Who knows better than the trader the mysteries of his trade?”
“… it seems to me likely that [Asda’s representatives] were, under advice, seeking to make only such changes as were needed to avoid what they judged to be an unacceptable risk of being attacked for copying while maintaining Puffin’s position as an obvious competitor and parody, and (they hoped) a ‘brand-beater’. I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard.”
“114. Finally, I come to the ‘living dangerously’ point. Mr Mellor submitted that if a trader takes a decision to live dangerously he recognises a risk of a successful legal action and so also recognises a likelihood that his activity will deceive some people. This submission was founded upon an observation of Robert Walker J … 115. In my judgment it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader’s goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant’s goodwill for himself the court will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’ … A trader who has taken the decision to live dangerously is in a different position, however. He has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away. All must depend upon the facts of the particular case. Further, it must be kept firmly in mind that the ultimate question whether or not the similarity between the trade mark and the sign is such that there exists a likelihood of confusion is one for the court to determine in the light of its global assessment of all material factors, of which the intention of the defendant, as a person who knows the market in which he is offering his goods or services, is only one. 116. In the present [case], the judge carried out precisely this assessment …. The judge considered that the evidence of Asda ‘living dangerously’ did not, in the circumstances of this case, amount to evidence of an intention to confuse. Asda had no wish for consumer to confuse one business for another and so the judge held its intention and conduct could not be relied upon as evidence of a propensity to confuse. I am entirely satisfied that the judge was entitled to reach this conclusion … ”
“Kitchin LJ was careful in this passage not to say that a conscious decision on the part of the defendant to live dangerously could never support a claim for passing off. Counsel for Glaxo submitted that the relevance of such a state of mind was that it showed that the defendant, as a person who knew the relevant market, was aware of the risk of deception and proceeded recklessly in the sense of not taking care to avoid that risk materialising. Counsel for the Defendants submitted that, if the defendant showed that he did not want his customers to be deceived, that was probative of a lack of a likelihood of deception. In my judgment this is precisely why Kitchin LJ said that it all depended on the facts of the case. If it is proved that the defendant was aware of the risk of deception and proceeded recklessly, then that is capable of supporting the conclusion that deception was likely even if the defendant did not intend to deceive. If, however, what is proved is that the defendant was aware of the risk, but thought that he had done sufficient to avoid it materialising, then that is not supportive of the conclusion that deception was likely, but rather of the reverse.”
“It is sufficient in my view if what is done represents the defendant's goods to be connected with the plaintiff’s goods in such a way as would lead people to accept them on the faith of the plaintiff's reputation. Thus for example it would be sufficient if they were taken to be made under licence, or under some trading arrangements which would give the plaintiff some control over them…”
“231. The claimant has a good starting point for this case, … I have found that Sign 2 was deliberately created to form a link with, or to make an allusion to, easyJet at least. The strength of the allusion, subjectively speaking, was probably increased by the existence of the family of marks. That being the case, a ‘connection’ with easyJet was intended in the sense that it was intended to suggest that ELA’s business was somehow connected with the easyJet brand. Just as I was prepared to conclude that there was a link for the purposes of section 10(3), starting from Mr Burnside’s intention to create one, I consider it right to take that intention as a strong starting point in the inquiry as to its effect for the purposes of passing off. … 232. It is true that in this case the point is not explicitly pleaded, but the deliberate adoption of the appearance of Signs 2 and 3 to form a link in the mind of the public was firmly put to Mr Burnside … and he had a sufficient opportunity to meet it without its being pleaded. It was not unfair to mount that challenge and he has had a fair opportunity of rebutting it. The intention was sufficiently proved by the evidence that I have referred to above under the consideration of section 10(3). 233. … It is unnecessary to brand Mr Burnside as dishonest for these purposes, and I do not do so, but his deliberate acts fit with the principles in [Australian Woollen Mills]. 234. So, as I have observed, the claimant has a good starting point in demonstrating the necessary misrepresentation and its propensity to mislead. I should only reject that case if it were clear enough that the deliberate act was ineffective to achieve the intended result, and I find that there is no real evidence of that. Whether, were I to be starting from a position in which that evidence of intention did not exist I would come to the same conclusion is perhaps not that easy, particularly in the light of the very different businesses of easyJet and its family (which is usually an important pointer against misrepresentation - see Harrods Ltd v Harrodian School Ltd[1996] RPC 697 ), but I do not need to go down that particular line of inquiry. I do not ignore that sort of evidence, but pointers the other way do not, in my view, negate the natural inference to be drawn from my finding as to Mr Burnside’s intention. 235. I therefore find that the deployment of Signs 2 and 3 amounted to a relevant misrepresentation of connection between ELA and the Easyjet brand and its family, and it would mislead a relevant portion of the average consumers, particularly the bidder/consumer. I do not need to consider the position of easyProperty.”
“The Claimant enjoys an excellent reputation based on the high standards of the services provided by and/or licensed by the Claimant under the Registered Marks and, in particular, the easyJet Marks. Consumers who are aware of the easyJet Mark reputation and/or the ‘Easy’ Family Mark Reputation will have formed a positive view of the Claimant and/or its goods and services. By wrongly creating a link with the Claimant, the Defendants benefit from an association with that positive view. Such benefit is unfair because it arises from the Defendants’ deliberate acts of infringement.”
“[Counsel for easyGroup] relied on benefit to the defendants in being able to use Signs 2 and 3 without a licence as giving rise to damage because the ability of the claimant to charge others for a licence would be diminished, but I am afraid I do not understand that logic.”
“38. … If someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties. Such use will frequently be damaging in the direct sense that it will involve selling inferior goods or services under the guise that they are from the claimant. But the action is not restricted to protecting against that sort of damage. The law will vindicate the claimant’s exclusive right to the reputation or goodwill. It will not allow others to so use goodwill as to reduce, blur or diminish its exclusivity. It follows that it is not necessary to show that the claimant and the defendant share a common field of activity or that sales of products or services will be diminished either substantially or directly, at least in the short term. Of course there is still a need to demonstrate a misrepresentation because it is that misrepresentation which enables the defendant to make use or take advantage of the claimant’s reputation. 39. Not only has the law of passing off expanded over the years, but the commercial environment in which it operates is in a constant state of flux. Even without the evidence given at the trial in this action, the court can take judicial notice of the fact that it is common for famous people to exploit their names and images by way of endorsement. They do it not only in their own field of expertise but, depending on the extent of their fame or notoriety, wider afield also. It is common knowledge that for many sportsmen, for example, income received from endorsing a variety of products and services represents a very substantial part of their total income. The reason large sums are paid for endorsement is because … those in business have reason to believe that the lustre of a famous personality, if attached to their goods or services, will enhance the attractiveness of those goods or services to their target market. In this respect, the endorsee is taking the benefit of the attractive force which is the reputation or goodwill of the famous person.”
“(1) Damages assessed by reference to the value of the use wrongfully made of property … are readily awarded at common law for the invasion of rights to tangible moveable or immoveable property (by detinue, conversion or trespass). The rationale of such awards is that the person who makes wrongful use of property, where its use is commercially valuable, prevents the owner from exercising a valuable right to control its use, and should therefore compensate him for the loss of the value of the exercise of that right. He takes something for nothing, for which the owner was entitled to require payment. (2) Damages are also available on a similar basis for patent infringement and breaches of other intellectual property rights.”
“GPEA carries on the business of licensing estate agents to use the Fine & Country brand, and organises nationwide advertising (and the website) for them. In substance it is a franchisor of the Fine & Country brand. As [counsel for the claimants] rightly submits there need be no common field of activity between claimant and defendant in a passing off action. But in any event the fields of activity are sufficiently close. If the brand is damaged, GPEA’s ability to attract licence fees will also be damaged. Its ability to attract licence fees is itself goodwill.”