“(a) Advertising services; promotion services; (b)(i) the bringing together, for the benefit of others, of a variety of goods, through a television shopping channel, enabling customers to conveniently view and purchase those goods by means of telecommunications; (b)(ii) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications; (b)(iii) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise internet web site; (b)(iv) the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a wholesale outlet.”
“(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.”
“245. First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period. 246. Secondly, the goods or services for which the mark is registered must be considered. If the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories. 247. Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way. 248. Fourthly, these issues are to be considered from the viewpoint of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark.”
“… must now be seen in light of the more recent guidance given by the CJEU in, for example: Ferrari SpA v DU (Joined Cases C-720/18 and C-721/18) EU:C:2020:854; [2021] Bus LR 106, at paras 36-53. There the CJEU explained, at para 40, that the essential criterion to apply for the purposes of identifying a coherent subcategory of goods or services capable of being viewed independently is their purpose and intended use.”
“In that regard, it should be noted that it is apparent both from the wording of the last sentence of Article 42(2) of Regulation No 207/2009 and from paragraphs 39 to 42 of the present judgment that it is important to assess in a concrete manner — principally in relation to the goods for which the proprietor of the earlier mark has furnished proof of use of the earlier mark — whether those goods constitute an independent subcategory in relation to the goods falling within the class of goods concerned, so as to link the goods for which genuine use of the earlier mark has been proved to the category of goods covered by the application for registration of that trade mark.”
“50. … the aim of the criterion of the purpose and intended use of the goods in question is not to provide an abstract or artificial definition of independent subcategories of goods; it must be applied coherently and specifically …. 51. Accordingly, if, as in the present case, the goods concerned have several purposes and intended uses — as is often the case — determining whether there exists a separate subcategory of goods by considering in isolation each of the purposes that those goods may have will not be possible, contrary to what the appellant claims. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have the effect … of limiting excessively the rights of the proprietor of the earlier mark, inter alia in that his legitimate interest in expanding his range of goods or services for which his trade mark is registered would not sufficiently be taken into consideration. 52. The General Court was therefore right not to take into account each of the uses of the goods at issue — to cover, conceal, adorn or protect the human body — in isolation, those different uses combining for the purpose of putting those goods on the market …. 53. Last, the second complaint of the second part of the first ground of appeal, by which the appellant claims that the Court failed to take into account the fact that the goods were aimed at different publics and were sold in different shops, must also be rejected as unfounded, in so far as such criteria are not relevant for defining an independent subcategory of goods, but for assessing the relevant public ….”
“43. As is apparent from paragraph 37 of this judgment, the only relevant question in that regard is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark. 44. Such a situation cannot be excluded on the sole ground that, according to an economic analysis, the various goods or services included within that category belong to different markets, or to different market segments. This is all the more the case where there is a legitimate interest of the proprietor of a trade mark in expanding his range of goods or services for which his trade mark is registered (see, by analogy, … ACTC v EUIPO, C–714/18 P, EU:C:2020:573, paragraph 51).”
“It therefore appears, subject to verification by the referring court, that the fact that the company which is the proprietor of the marks in question in the main proceedings has used those marks in respect of replacement parts and accessories for ‘very high-priced luxury sports cars’ is not sufficient to establish that it has used those marks in respect of only some of the goods covered by them, for the purposes of Article 13 of Directive 2008/95.”
“… no supporter who was at least reasonably attentive to what they were doing could have the impression, once they had clicked through to a chosen retailer’s website, that they were still on the easyfundraising platform or were transacting a purchase with easyfundraising, or indeed with anyone other than the chosen retailer whose website they had chosen to visit.”
“155. The mark comprises the text, written in black type as a single word, all in lower case, with a strap line beneath that describes the nature of the goods sold, and a decorative element that can be seen either as a triangle, part of which is shaded to create a ‘tick’ shape, or (in 3D) as a pyramid, two faces of which are more darkly shaded. The font used for the text is unremarkable save for the even tracking of the characters. 156. The distinctive character of the mark is, in my judgment, partly in the conjoined word ‘easylife’ and partly in the design, with strap line and decorative elements added. The word ‘easylife’ is weakly distinctive (as compared with, e.g., ‘easytravel’, which is not inherently distinctive) because the concept of an easy life, which is emphasised by the strap line, is recognisable as an idea that has some meaning. However, the word is not strongly distinctive. Such greater distinctiveness as the mark has is attributable to the design elements. 157. Mr Edenborough relied, in support of a case that the word ‘easylife’ was the only distinctive part of the mark, on the fact that Mr Wise said that the company was and is known as ‘easylife’; but that is unsurprising, given that the tickball or any other figurative element would not be reproduced orally. As he accepted, aural characteristics were likely to be less material, given the use of the variants principally in catalogues and on websites….”
“162. In my judgment, each of the three tickball variants creates visually a different overall impression from the mark: the design has been significantly changed. The prominent elements of the new designs are the word, the more decorative font and the outsize tickball motif. The changes in (or omission of) the strap line (in all cases except the Tickball Lifestyle Variant), the omission of the triangle/pyramid, the marked change of font, and especially the inclusion of the tickball (in the three tickball variants) all contribute to a different impression. What is distinctive of all three of the tickball variants is the word ‘easylife’ and the tickball; the change of font and the presence or absence of strap lines are somewhat less distinctive. 163. Surprisingly, in closing submissions Mr Edenborough said that the tickball element was ‘entirely forgettable’. That is plainly wrong, both in terms of visual appreciation and on the evidence. Mr Wise ultimately accepted that the tickball (which is still used post-2022 in the new, easy+ branding of easyLife) was an essential element of the branding and an important part of the varied mark, whose purpose was to distinguish the brand. The tickball is a strong and distinctive element of the variants on which it appears. Perhaps the idea of it came from the original design of the mark, but it would not be recognised as such by the average consumer. The ball is new, the tick is prominent, and the size and position (and impact) of the device are entirely different. 164. In my judgment, accordingly, the three tickball variants have, overall, a different distinctive character, given that the visual appreciation of them would be the most prevalent form. The difference derives from the visual and conceptual combination of the word ‘easylife’ and the strong tickball motif. They are distinctive in a different way from the registered mark.”
“171. I have found that it is not the words ‘easylife’ alone that make the mark in this case distinctive. Accordingly, the loss or change of the other distinctive elements alters the distinctive character of the mark, and the Text Variant is not a variant form within s.46(2) either. There was no evidence from the Claimant that the variants in issue were used because they were more suited to inclusion on particular documents produced or used by the business, or that the first easylife mark could not be used. On the contrary, Mr Wise confirmed that the Tickball Variant was first used as early as 2001, and other variants followed in 2013, 2019 and 2022, and he and Mr Oakenfold said that different signs were used in this way (often at the same time) to see which, if any, was most effective, but otherwise without discriminating between them. 172. This is therefore not a case of minor variations to a registered mark in order to accommodate particular locations of branding and what they could sensibly accommodate.”
“I have naturally read carefully the Deputy Judge's reasoning for his conclusion to see whether I am persuaded that I should follow his decision, despite my own evaluative conclusion that the differences in the variants altered the distinctive character of the mark as registered. I am not persuaded that the word "easylife" is the only distinctive element of the mark, or that the average consumer would detect the tick within the triangle motif in the registered mark and link it to the tickball motif. Even placing the forms side-by-side, which the average consumer does not have the ability to do, it is not an obvious connection. There was no evidence before me to support an argument that the aural characteristics of the mark and variants were of any real significance. For the reasons that I have given, I therefore decide that the distinctive character of the mark is varied by each of the variant forms.”
“188. Applying the guidance in Merck, the goods and services in relation to which the mark was used during the relevant period were, so far as advertising and promotion services were concerned, the provision of advertising by placing inserts in Easylife’s published catalogues. The specification of ‘advertising services; promotion services’ specified in the registered mark is very broad indeed: as Mr Aikens on behalf of the Defendants submitted, ‘it covers everything from a creative ad agency to providing advertising space in an in-flight magazine, to developing a media buying strategy for a multinational company, to Google running the Google sponsored online advertising market. The same can be said for promotion services.’ Mr Aikens went on persuasively to explain why banner advertising on a website is an entirely different sub-category, with different qualities and consequences, from DRMG’s clients’ physical inserts in the Easylife catalogue, but did not dissent from my suggestion that any kind of advertisement placed within a physical publication, whether inserted or printed on a page, may not, in its essentials, be different from the limited form of insert advertising carried on by Easylife. 189. The average consumer of advertising services of this kind is, in my view, likely to regard a physical, non-electronic advertisement of this kind differently from any more structured or web-based form of advertising. So, for that reason, there is an identifiable sub-category of advertising and promotional services concerned with advertising placed or inserted into printed publications. To confine the sub-category to inserts in catalogues would in my view unfairly limit the ability of Easylife to extend its range to cognate activities, though web-based advertising (which Easylife at no stage conducted, either before or during the relevant period) would be a different sub-category. 190. Accordingly, in agreement with the Defendants’ analysis, I consider that a fair specification of the first easylife mark as regards advertising and promotion services would have been ‘providing advertising or promotional space in printed publications’.”
“The facts are that all the goods in question are sold by easyJet to passengers who are flying on its planes, not in other outlets - though the goods wished to be purchased by passengers can be pre-ordered (by paying for them online) before they fly. There was no evidence to establish that any of the goods that easyJet sells can be collected by someone who is not an easyJet passenger on a plane, or delivered to them on land. In that sense, although the contract of sale and purchase does not have to be concluded on a plane or at an airport, the goods can only be delivered to an easyJet passenger in the air.”
“The provision of retail services in supplying certain goods (essentially of a gifts character) to those travelling by aircraft, which the passengers receive onboard and disembark with at their destination, is essentially different from providing a retail store, a market stall, wholesale premises or a website for purchase. It is an ancillary service of convenience to a very limited market. I would add two points to her reasoning. First, while at one level retailing other people’s manufactured goods can be seen as a single descriptive category, in whatever exact way it is performed, in reality it is such a broad category of different types of services provided to different consumers that it ought to be susceptible to different subcategories, as long as these are not arbitrary. Second, that if the matter is looked at in terms of the final sentence of Kitchin LJ’s fourth proposition (‘ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark’), it is self-evidently fair to specify the services for which the Claimant has used the mark throughout the 5 years as being solely in connection with flights on aircraft, as there has been no other kind of retail of those goods; and no consumer would be likely to consider that offering the same goods for sale in a bricks and mortar store, or on a home delivery website, was anything to do with easyJet or easyGroup, given their wholly distinct retail operations.”
“149. Mr Anderson's evidence, on which the Claimant relies, was that easyGroup offered free @easy.com email addresses from 2000 so that customers could see what other easy+ brands were available on the easy.com website. The question raised by the Defendants' challenge is whether this use (as to which no evidence of quantity was given) was merely promotional, in connection with the sale of other services or goods, and not to exploit commercially the mark for the relevant goods and services, namely ‘electronic mail services’. 150. The website was just a webmail platform until 2002, but it was then a portal for the various easyGroup businesses. The commercial benefit of the exploitation of easy.com was therefore that of the other businesses, or easyGroup as the parent company (at that early time) and then licensor (in the relevant period). The email addresses were not provided to encourage consumers to buy more on easy.com or from easyGroup, to take out paying subscriptions, or with a view to charging for their use later, but only to use the website for the benefit of other businesses and, indirectly, easyGroup Ltd as their holding company. However, during the relevant period the businesses were not owned by the Claimant but by its licensees.”
“152. … No company in the easy+ group at the time was selling electronic mail services or intending to do so. As Mr Anderson said, the email addresses were used to entice consumers to a portal on which the other businesses provided links to or advertised their different goods and services. This seems to me to be the distribution of promotional items to encourage the sale of other goods and services … 153. There was therefore no use of the requisite quality to amount to genuine use of the easy.com mark …”
“There is some similarity of the 2022 EF Sign and the marks owing to use of the word ‘easy’ and the use of it as a prefix to a word describing the nature of the business, but otherwise no visual, aural or conceptual similarity between the marks and the Sign. In overall terms, the degree of similarity is low. The position is the same in relation to the simple word Signs EASYFUNDRAISING and EASYSEARCH and the second easylife mark: the similarity is limited to the word ‘easy’, which is not strongly distinctive; ‘easylife’ is conceptually distinct; and there is therefore only a low level of similarity in terms of global appreciation.”
“A secondary question arises in connection with the second easylife mark, as regards the on-line and mail order retail services that are part of its specification. EFL and easylife both provide services in connection with retail, namely a bringing together of products made or sold by other retailers; but there is also an important difference, namely that EFL provides a portal that a supporter can use to pass through (for a particular purpose) to buy products from other retailers. Easylife provides a website from which various products, including ones made by third parties, can be purchased directly from it. There is therefore some similarity but only at a fairly high level, in that both are providing services in connection with online retail.”
“258. I do not, however, consider that there is any risk of the average consumer confusing Easylife with easyfundraising, as the 2022 EF Sign, the plain word Sign and the second easylife mark only have limited similarity (the presence of the prefix ‘easy’), and there is only high level similarity in the retail services provided. Any user or intending user of the easyfundraising or easysearch site would be there for a specific reason, which is a service that only those sites provide. At the relevant date, Easylife advertised on easyfundraising’s platform, so it was evident on the platform that Easylife was something different. 259. As for indirect confusion, the presence of the word "easy" itself is not sufficient (in view of the substantial number of other users of that word) to lead an average consumer to think that easyfundraising or easysearch must be connected with Easylife, absent some additional common factor. The specific service that easyfundraising was providing, albeit in a retail context, was so different in substance from what Easylife offered that the average consumer would not have been likely to be confused about their origins or common ownership, though the retail context might have brought Easylife to mind. The difference from easysearch is also marked. 260. The issue of possible confusion in 2022 is therefore restricted to EFL’s provision of advertising and marketing services to its retailers or advertisers. The average consumer of the advertising and marketing services can be assumed to be sophisticated and careful. Indeed, in all but two cases, the services were provided to professional intermediaries acting on behalf of the retailers, the two exceptions being Amazon and eBay. There was no evidence about those who advertised on easysearch. The advertising clients would all have been aware of the nature of the business operation of EFL. They would likely have been aware of its having been carried on for a long time. 261. The risk of confusion alleged is the risk that the average consumer might be confused as to whether easyfundraising (or presumably easysearch, though little was said about it) was another easy+ brand, or connected to the brands. Given the nature of the average consumer in relation to these services, there was no real risk of that confusion. Indeed, the family of brands relied on by the Claimant in support of its argument (and which I accept existed) militates against any such confusion, because the family of brands use the very distinctive white and orange get up. This was a requirement of the easy+ brands guidance, which Mr Anderson said was to be adhered to without exceptions, save where, e.g. planning constraints prevented the use of orange on shop fronts, or the cleaning product containers only accommodated an orange band rather than being completely white and orange. Whatever an uninformed member of the public might have thought, there was no risk of a sophisticated professional (or Amazon or eBay) being confused as to whether this relatively longstanding business was one of the easy+ companies or associated with them. 262. Unsurprisingly, there was no evidence of any confusion by advertisers, despite easyfundraising having been in operation since 2005 and easysearch since 2007, and despite the very extensive searches. If any sophisticated user acting as an intermediary was mistaken about the ownership or control of EFL, it is more likely than not that that mistake would have come to light in time, either by the professional in question realising their mistake or as a result of the content of communications between the professional and either EFL or easyGroup. The small size of the EFL operation in its early years, which was no longer the case by 2015, does not undermine that conclusion.”
“If the first easylife mark could have been relied on, in consequence of genuine use of a legitimate variant, there would be some high-level similarity of retail-connected services, for reasons given below in relation to the second easylife mark as at June 2022, but I would have found no risk of confusion for the same reasons given in [258] and [259] in relation to the second easylife mark. There would also be identity of advertising or promotion services, but again no risk of confusion, for essentially the same reasons as are given in [260]-[262]. Although Easylife was not part of the family of easy+ brands at the time in question, or at any time before 2022, the average consumer of advertising or promotional service would have been well able to distinguish between easyfundraising or easysearch on the one hand and Easylife on the other. There is no evidence to the contrary.”
“In my judgment, there is less similarity between the 2015 EF Sign and the easyJet ... marks than there was between the EF Sign or the @easyuk handle and those marks. That is because the word ‘easy’, which is the only point of any similarity, is less prominent on the 2015 EF Sign, and because the 2015 EF Sign contains other text and a logo that are equally prominent. There is only very low similarity with the 3 easy+ marks.”
“…. As regards the second easyJet mark, EFL did not provide retail services to airline passengers, nor, for the same reasons that I have previously given, did it assume any kind of responsibility for any such services provided by its advertisers. There was no evidence of pages of the easyfundraising website alluding to some partnership between EFL and the retailers at that time, but even if there were pages similar to the 2023 pages that were in evidence, they do not, when assessed overall, amount to any indication of partnership or responsibility for the advertiser’s goods or services.”