“(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.”
“The law with regard to what constitutes a variant form of a registered mark unders.46(2) of the Trade Marks Act 1994 was considered by Arnold J in Walton v Verweij Fashion[2018] EWHC 1608 (Ch) at [119] to [123]. From this, I note the following: a. The objective of s.46(2) is to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (see Walton at [119], citingCase C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd at [29]). b. There are two parts to the necessary inquiry. First, to identify the points of difference between the mark as used and the mark as registered and, second, to ask whether those differences alter the distinctive character of the mark as registered (see Walton at [120], citing BUD and BUDWEISER BUDBRAU Trade Marks[2002] EWCA Civ 1534 ). c. The normal approach to the assessment and comparison of distinctive character applies in this context. Accordingly, it is necessary to analyse the ‘visual, aural and conceptual’ qualities of the mark as used and of the mark as registered and to make a ‘global appreciation’ of their likely impact on the average consumer (see Walton at [120]-[121], citing BUD and BUDWEISER BUDBRAU at [45] andCase C-501/15 European Union Intellectual Property Office v Cactus SA at [68]-[71]).”
“As the case law of the General Court makes clear, alteration or omission of elements which are not distinctive is not capable of altering the distinctive character of a trade mark: seeCase T-690/14 Sony Computer Entertainment Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:T:2015:950] at [45]. Furthermore, when a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter: see Sony at [49]. Accordingly, it is possible in an appropriate case for use of the word element on its own to constitute use of the trade mark: see Sony at [51].”
“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.”
“ a. The use in Sign 1 of a conventional dot over the letter ‘i’ in ‘easylife’ in place of the triangle which, in the mark, had acted as the dot over that letter ‘i’ and, by means of different degrees of shading, contained a tick device; b. The addition in Sign 1 of a larger white tick contained in a black circle placed in front of the word ‘easylife’ (‘the tickball’); and c. The use of a different font for the word ‘easylife’.”
“50. First, in my judgment, both types of average consumer would see the dominant element of both the Easylife Stylised Mark and Sign 1 as being the word ‘easylife’. Aurally, that word is unaltered and … the average consumer is far more likely to use that word when identifying the origin of the relevant goods or services than to try to describe the figurative elements of the mark or of Sign 1. Visually, the ways in which that word is depicted in the mark and in Sign 1 are very similar. In both cases it is depicted without a break using lower case letters throughout and I do not think that the relatively small difference in the fonts used would be seen as of any real significance. Conceptually, also, the word ‘easylife’ is the dominant element of both the mark and Sign 1. Whilst the fact that the words ‘easy’ and ‘life’ would be seen as normal descriptive words with a clear meaning …, the fact that they are pushed together to form a made-up word would, in my judgment, give the combination an element of distinctiveness in the eyes of the average consumer whilst also alluding to the customer experience offered by Easylife – the possibility of an easier life and a stress-free experience – a concept reinforced by the ‘tick’ element that is contained in both the mark and in Sign 1. 51. As regards that tick, it is clearly more prominent in its ‘tickball’ form in Sign 1 than it is in the triangle in Easylife Stylised Mark. However, I do not accept the Defendants’ argument that the average consumer would not perceive the tick within the triangle in the Easylife Stylised Mark. Whilst the shading of the triangle does not serve to emphasise the tick as strongly as the tickball, the tick is undoubtedly present and the unusual use of a triangle (as opposed to the conventional dot) to form the ‘I’ of the word ‘easylife’ would draw the attention of the average consumer, and the average consumer would recognise it as reinforcing the concept (as I have said above) of the word ‘easylife’. Accordingly, notwithstanding Mr Caplan’s comment that the tickball was a core part of and fundamental to Easylife’s branding, I do not think that this difference alters the distinctive character of the mark. As set out above, changes to figurative elements of a mark are less likely to be regarded as changing the distinctive character of a mark and, in my judgment, the dominant feature was and remained the word ‘easylife’. … it seems to me that the average consumer would be more influenced by the continued presence of the ‘tick’ than by the change in the geometric shape surrounding it, the change in colour or the change in position.”
“d. The use in Sign 2 of the colour blue for the font and the circle; and e. The change in the lower strapline so that in Sign 2 it reads ‘everyday solutions’ instead of ‘lifestyle solutions’.”
“If, as I have concluded, Sign 1 does not alter the distinctive character of the Easylife Stylised Mark, then it seems to me that the same must apply as regards Sign 2. In the first place, I do not think that the adoption of a blue font for the word ‘easylife’ and for the circle around the tick would be seen as significant in terms of the distinctive character of the Easylife Stylised Mark. The same seems to me to be the case in relation to the change in the lower strapline. In my judgment, notwithstanding Mr Caplan’s evidence that this change had been a deliberate marketing decision, given that the words of the strapline are of little distinctive character and are depicted in a much smaller font than the word ‘easylife’, the average consumer would not regard this change as altering the distinctive character of the mark.”
“… In the present case, the respective advertising services are being offered to the same type of third party customer for the same purpose (advertising that customer’s goods or services). As appears from Merck and the other cases referred to above, the purpose for which the services are provided is important and here, whilst it is possible to describe the service provided by Easylife in narrower terms than those of the registration, the purpose of the service being provided seems to me to be the same as that provided for under the registration. The customer is looking for a means to advertise its goods or services. The fact that that service is provided through providing space for inserts in a catalogue is, as Mr Edenborough submits, a means for delivering an advertising service rather than being indicative of a different or distinct category of service.”
“85. There is clearly a visual and aural similarity between the Easylife Stylised Mark and the Defendants’ Signs in that they all feature the word ‘easy’ and they all use that word in conjunction with a similar second word (i.e. the word ‘life’ in the case of the mark and the word ‘live’ in the case of the signs). Aurally and, particularly, visually those words are the most important part of the mark/sign as a whole. A further similarity is that, in the case of the Defendants’ two logos shown above, the two words are run together without a gap just as they are in the mark. 86. Despite this, I find that the average consumer would see the mark and the signs as having, at best, a moderate level of similarity. The word ‘easy’ is a simple descriptive word that is frequently used both by itself and also … in combination with other words to form a brand …. In the case of the Easylife Stylised Mark, that word is used in combination with another simple descriptive word ‘life’ – a combination which …is used in normal speech and which has also been used by third parties as a brand or part of a brand. The average consumer would be aware of this. Further, the average consumer looking at the Defendants’ Signs, would see that the word ‘easy’ is being combined with a different descriptive word (‘live’), to create ‘easylive’ which is conceptually very different to ‘easylife’. Conceptually, the mark ‘easylife’ stands by itself – a person can have an easy life. Nothing more needs to be said. In contrast, ‘easylive’ does not stand by itself but is adjectival in nature. It needs something more and it begs the question – an easy live what? In three of the signs, the answer is provided – the word ‘Auction’, with a capitalised first letter and, in the case of the Auction Emphasised Logo, with emboldening to give it further prominence. I do not think that the average consumer would skate over the inclusion of that word in these signs. In the other cases, the question is likely to be answered by the context in which the sign is used and which, in this case, is likely to make clear that it is a live auction - a real time auction made easy by being accessible online rather than in person. 87. Another important difference (visually and conceptually) is that none of the Defendants’ Signs include anything even remotely resembling the triangular device containing a tick that is a feature of the Easylife Stylised Mark. As I have found when dealing with the issue of revocation (see paragraph 51 above), that device served to emphasise the concept created by the word ‘easylife’ and it would be seen by the average consumer as an important part of the mark. Its absence from the signs is, therefore, a significant difference and, as I have mentioned, highlights the different conceptual message that the signs convey. 88. Finally, the average consumer would note other differences, albeit of lesser distinctive significance, between the Defendants' Signs and the Easylife Stylised Mark – such as the omission of the words (in small font) ‘Lifestyle Solutions’ and the inclusion of additional words such as ‘.com’ or ‘(Services) Ltd’.”
“105. I have already dealt with how the average consumer would have viewed the Easylife Stylised Mark and the Defendants’ Signs (see paragraphs 83 to 88 above). Whilst there is a moderate similarity between them, the average consumer of both types (a member of the general public or customers looking to advertise their goods) would have been well aware that that similarity arose from the use of a word (‘easy’) that was a normal word, a word that is widely used and which is capable of being used descriptively, but that was given some level of distinctiveness in the mark by being used in combination with the word ‘life’, the words ‘lifestyle solutions’ and the triangle/tick device. It seems to me that the average consumer would not assume that a party trading, even trading in relation to identical or similar services, using another sign that featured the word ‘easy’ was the Claimant or associated in some way with the Claimant and/or its mark. The average consumer may well be aware of extensive use made of the word ‘easy’ by the Claimant and its group of associated companies but I do not think that that person would assume that the Claimant had a monopoly of such use. 106. Here, the average consumer would see that, in the case of the Defendants’ Signs, the word ‘easy’ had been combined with the word ‘live’ which, whilst sharing 3 of the 4 letters of the word ‘life’, has created something which, as set out above, is conceptually quite different to the Easylife Stylised Mark. The average consumer would also note the omission of the triangle/tick device and the other differences to which I have referred. All of this suggests that the average consumer is not likely to be confused, despite the identical or similar nature of the parties’ respective services.”
“… I agree with the point made by Mr Aikens … that this does not mean that the average consumer was any more likely to be confused. I have to say that I am not certain whether it would be correct to say that the enhanced distinctive character was limited to the business actually conducted under the Easylife name (which, as Mr Aikens argued … was quite different to that being conducted by the Defendants). But even if it was not so limited, I do not accept that the enhanced distinctive character in this case would have led to any real likelihood of confusion given the descriptive (and common) nature of the word ‘easy’ and the very clear conceptual differences between the Easylife Stylised Mark and the Defendants’ Signs to which I have referred above.”
“a. The Defendants’ record of a call received in July 2017 from a lady complaining about being ‘harassed by people that phone you from easylife’. However, her message expressly stated ‘I don’t know if you’re the right number’ and she apologised in advance in case she was making a mistake – which turned out to be the case (‘she wanted to contact easy life not easy live’). It is hard to see this as real confusion as opposed to mere uncertainty. b. An email exchange in October and November 2017. In this, a person (who had clearly been a customer of both Easylife and the Defendants) emailed Easylife regarding an entry on her debit card statement for the sum of£3 . It turned out that the payment was to the Defendants and was nothing to do with Easylife. This does seem to involve some confusion although this could be due to a misreading of the statement rather than a mistake as to the trade origin of the relevant services and it is hard to attribute much weight to this incident without knowing more about how the transaction appeared on the credit card statement and why the mistake was made. c. A similar mistake and similar reservations apply with regard to an email exchange in September 2021 when a customer of the Defendants emailed Easylife seeking a refund of the£3 registration fee for an auction. d. Another example, from April 2021, involved a customer of both Easylife and the Defendants. His credit card statement showed a payment of a£3 registration fee to the Defendants in respect of an auction at the Peebles Auction House and, on the same day, a payment of£59.99 . At 12.01 he emailed the Defendants querying that latter payment as he had not bid for anything at the auction. Then, at 12.07, he emailed again saying the Defendants should ignore his earlier email as the payment had been ‘to Easy Life, not Easy Live’ and had related to a purchase from Easylife made in the previous month. Clearly, without the Defendants even having to respond, the customer had easily been able to correct his own mistake presumably after looking at his credit card statement more carefully. This does not seem a promising basis on which to find a likelihood of confusion. e. An exchange of emails in July 2021 between the Defendants and a person asking to be unsubscribed from ‘this site’ (which site was unspecified). On the Defendants pointing out that they had no account for him, he responded confirming that that was correct but stating that ‘the email which plugged me in to you was from Pickering Auctions’ and going on to say that that he had ‘bought items from Easy Life catalogues in the past but never authorised receiving emails from any companies with which you have arrangements’. It has to be said that the position is unclear save for the fact that this person was clearly annoyed and had made some form of link between his dealings with Pickering Auctions (presumably a customer of the Defendants) and Easylife. f. An email exchange in August 2021 where a customer who had bought an eleccoter [sic] bicycle from Easylife wrongly emailed the Defendants about the fact that it had not been delivered. The reason for this mistake is unclear. g. Finally, in June 2023 where a customer of Easylife initially emailed a query regarding an order to help@easylive.co.uk and, having received a failed message response, forwarded it to the correct address for Easylife. Again, no explanation was provided for the initial mistake.”
“120. In the context of the facts as a whole, this evidence is not sufficient to undermine the conclusion that I would have reached without such evidence – namely that there is no real likelihood of confusion. None of the seven examples is particularly convincing or strong evidence of relevant confusion. 121. Further, it is undoubtedly the case that an absence (or relative absence) of evidence of actual confusion is not necessarily fatal to a claim under s.10(2)(b) …. However, the fact that there are only these seven examples notwithstanding the scale of Easylife’s business and notwithstanding the fact that the Easy Live Auction name has been used since January 2010 (some 14 years) suggests that the likelihood of confusion is very low, indeed insignificant. 122. It is also possible that, with the passage of time, evidence of actual confusion might be difficult to find. However, the parties have undergone very extensive searches on the issue of confusion. … Thus, even if I had found that the seven examples referred to above were evidence of actual confusion, if there was a real likelihood of confusion, I would have expected to find more than those seven examples.”
“… given the important conceptual difference referred to in paragraph 86 above (which applies equally in the case of the Easylife Word Mark) and given the other (albeit less important) distinguishing features, I conclude that the level of similarity is moderate.”
“… whilst the absence of stylisation means that the Easylife Word Mark is somewhat closer to the Defendants’ Signs than the Easylife Stylised Mark had been, I remain of the view the average consumer (of both types) would still see the similarity as arising from the use of the word ‘easy’ - a normal and widely used word of a descriptive nature. Indeed, in the absence of any stylisation, the average consumer would if anything be even less inclined to assume that another sign including the word ‘easy’ was the Claimant or Easylife or associated in some way with the Claimant and/or Easylife and/or the Easylife Word Mark.”
“…the objective of retail trade is the sale of goods to consumers. That trade includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the above-mentioned transaction with the trader in question rather than with a competitor.”
“It is unnecessary to examine whether services can, like goods, be the subject of ‘retail trade’ in the proper sense of the term, since it is clear, as was pointed out by the governments which submitted observations to the Court and by the Commission, that there are situations in which a trader selects and offers an assortment of third party services so that the consumer can choose amongst those services from a single point of contact.”