“A business plan is being developed to transform easy.com into a web based email provider, and ISP and/or portal site.”
“Some people think they can make a fast buck by stealing our name and our reputation. They set up websites and companies using the name ‘easy’ (or phonetic versions of it) which can either pay a passing resemblance to an easyGroup company or be a direct copy. Sometimes these people ask us for money, sometimes they just hope consumers will think they are an easyGroup company and will part with their money. If you see a company that you think is disguising itself as an easyGroup company or that is trying to piggyback off our brand in any way, then please help us to protect both the consumer and our brand. Please email any information to domains@easyGroup.co.uk and indicate if at any stage you have been under the impression that this was a genuine easyGroup company set up by our founder and chairman Stelios. Evidence of confusion helps our case.”
“The site doesn’t always work but check out the google cached version if it’s not working. I wasn’t sure if it was part of the brand until I saw how bad the page was then I realised it couldn’t be!”
“I was recently looking for a flatmate some friends recommended easyroommate.com, saying it was part of the easy group. Indeed, the colour scheme looks similar, orange text, etc, but having seen it, I’m not convinced and don’t think it is part of the easy group afterall. Thought this a bit naughty really, my mates were certainly deceived!!” (These two emails are relied upon by easyGroup as instances of confusion, and I shall consider them further in that context below.) Thought this a bit naughty really, my mates were certainly deceived!!”
“Intellectual Property: The easyGroup of companies has built up a significant reputation in the name ‘easy’ and has a number of trademark applications and registrations in many countries. easyGroup cannot permit others to use the ‘easy’ name without the group’s rights being prejudiced. It follows that no use should be made of the name ‘easy’ (or anything similar to it) without our consent.”
“Our clients do not accept that you have any proprietary rights in the use of the word ‘easy’. To take account of your concerns our clients have re-designed their websites since this correspondence commenced and, specifically, at the foot of the home page of the UK section, i.e. UK.easyroommate.com, it clearly states: ‘We are not associated with the easyGroup’. You will also note that the colour used for the words EasyRoommate has been changed to light blue. We do not accept that the colour previously used was so similar to the colour used by easyGroup that there was any risk of confusion and our clients have voluntarily made this alteration to make the distinction even plainer. In summary, our clients feel that they have done all that they can reasonably be expected to do to accommodate your concerns.”
“… our clients have sought to respond to your principals’ concerns by: (i) Changing the colour used for the name in the header on the home page to blue. (ii) Putting a disclaimer at the foot of the home page making it plain that there is no connection between our clients’ business activities and your clients. (iii) As a final gesture our clients have renamed the UK section of the site to ‘Flatmate World’. This final gesture is temporary, but will become permanent if no objection is received within 7 days of today. Our clients have already amended the site and we would invite you to visit it. In the absence of a positive response from you, the site will revert to its former name.”
“We note that your client’s UK TM Application is approaching the end of the opposition period. As a gesture of goodwill and in the hope of reaching an amicable solution, we do not propose to commence opposition proceedings at this time. We trust that your client will reciprocate and make the changes referred to above. In the meantime, all rights against your client are reserved.”
“We note that you are aware of previous communications between our respective clients, in which all of the issues were addressed. Please note that Our Client considered the matter closed many years ago.”
“Article 7 Absolute grounds for refusal 1. The following shall not be registered: … (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; … 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. 3. Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Article 8 Relative grounds for refusal 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: … (b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. … 4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign, (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Article 9 Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. … Article 15 Use of Community trade marks 1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. 2. The following shall also constitute use within the meaning of paragraph 1: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; … Article 50 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; … 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only. Article 51 Absolute grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, (a) where the Community trade mark has been registered Absolute grounds for refusal … (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; … Article 8 Relative grounds for refusal … (b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Rights conferred by a Community trade mark … (b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. Article 15 Use of Community trade marks in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; … Grounds for revocation (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; … Article 51 Absolute grounds for invalidity (a) where the Community trade mark has been registered 150. … 2. Where the Community trade mark has been registered in breach of the provisions of Article 7 (1) (b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. 3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only. Article 52 Relative grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8 (2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; … (c) where there is an earlier right as referred to in Article 8 (4) and the conditions set out in that paragraph are fulfilled. … 4. Where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim. …”
“31. I agree … that the notion of an average consumer requires the court to consider any relevant class of consumer, and not to average them. I believe that conclusion to be consistent with the approach taken by this court in Interflora Inc and another v Marks and Spencer plc … 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….”
“33. A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7(1)(c) of Regulation No 40/94 is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services (as regards Article 3 of First Council Directive 89/104/EEC of21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), … 36. … due account must be taken of the objective pursued by Article 7(1)(c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7(1) must be interpreted in the light of the general interest underlying it …. 37. The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services …. 38. With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes …. 39. By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question …. It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration …. … 46. As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive …. 47. There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation …, Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings. 48. In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal. 49. The situations specifically covered by Article 7(1)(c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a ‘characteristic’ of the goods or services referred to in the application. By using, in Article 7(1)(c) of Regulation No 40/94, the terms ‘the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’, the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account. 50. The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics ….”
“in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it …, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company. ”
“82. … I recognise that the CJEU has not used the term ‘reliance’ in giving the guidance to which I have referred. However, the essential function of a trade mark is to guarantee to consumers the origin of the goods or services in relation to which it is used by enabling them to distinguish those goods or services from others which have a different origin. Perception by consumers that goods or services designated by the mark originate from a particular undertaking means they can rely upon the mark in making or confirming their transactional decisions. In this context, reliance is a behavioural consequence of perception. 83. The mark performs this function through its distinctive character. That character may be inherent or it may be acquired, but it can only be acquired through the use of the mark as a trade mark, that is to say for the purposes of the identification by consumers of the relevant goods or services as originating from a particular undertaking. I recognise that the CJEU explained in Nestlé v Mars that the acquisition of distinctive character may be the result both of the use, as part of a registered mark, of a component of it and of the use of a separate mark in conjunction with a registered trade mark; and further that in both cases it is sufficient that, in consequence of that use, the relevant consumers perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking. But once again, in such a case and were the mark to be used alone, consumers would not only perceive the goods or services designated by the mark as originating from a particular undertaking but would also rely upon it for that purpose in making or confirming their transactional decisions. 84. Accordingly, I agree with the judge that it is legitimate for a tribunal, when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness.”
“Article 15(1) of …. Regulation … 207/2009 … must be interpreted as meaning that the affixing of an individual EU trade mark, by the proprietor or with his consent, on goods as a label of quality is not a use as a trade mark that falls under the concept of ‘genuine use’ within the meaning of that provision. However, the affixing of that mark does constitute such genuine use if it guarantees, additionally and simultaneously, to consumers that those goods come from a single undertaking under the control of which the goods are manufactured and which is responsible for their quality. …”
“(9) The territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to genuine use in the Community: …. (10) While it is reasonable to expect that a Community trade mark should be used in a larger area than a national trade mark, it is not necessary that the mark should be used in an extensive geographical area for the use to be deemed genuine, since this depends on the characteristics of the goods or services and the market for them: …. (11) It cannot be ruled out that, in certain circumstances, the market for the goods or services in question is in fact restricted to the territory of a single Member State, and in such a case use of the Community trade mark in that territory might satisfy the conditions for genuine use of a Community trade mark: ….”
“by avoiding imposing a requirement for strict conformity between the form used in trade and the form in which the trade mark was registered, … 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.”
“43. …. The first part of the necessary inquiry is, what are the points of difference between the mark as used and the mark as registered? Once those differences have been identified, the second part of the inquiry is, do they alter the distinctive character of the mark as registered? 44. The distinctive character of a trade mark (what makes it in some degree striking and memorable) is not likely to be analysed by the average consumer, but is nevertheless capable of analysis. … 45. Because distinctive character is seldom analysed by the average consumer but is capable of analysis, I do not think that the issue of ‘whose eyes?—registrar or ordinary consumer?’ is a direct conflict. It is for the registrar, through the hearing officer's specialised experience and judgment, to analyse the ‘visual, aural and conceptual’ qualities of a mark and make a ‘global appreciation’ of its likely impact on the average consumer, who: ‘normally perceives a mark as a whole and does not proceed to analyse its various details.’ The quotations are from para.[26] of the judgment of the Court of Justice inCase C-342/97 Lloyd Schuhfabrik Meyer GmbH v Klijsen Handel BV [1999] E.C.R. I-3819; the passage is dealing with the likelihood of confusion (rather than use of a variant mark) but both sides accepted its relevance.” ‘normally perceives a mark as a whole and does not proceed to analyse its various details.’ The quotations are from para.[26] of the judgment of the Court of Justice inCase C-342/97 Lloyd Schuhfabrik Meyer GmbH v Klijsen Handel BV [1999] E.C.R. I-3819; the passage is dealing with the likelihood of confusion (rather than use of a variant mark) but both sides accepted its relevance.”
“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.”
“The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of matters arising after the date of publication of a Community trade mark application, which matters would after publication of the registration of the trade mark, be prohibited by virtue of that publication. …”
“(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.”
“79. As regards the applicant’s argument that its earlier marks constitute a ‘family of marks’ or a ‘series of marks’, which can increase the likelihood of confusion with the mark applied for, such a possibility was recognised in BAINBRIDGE and confirmed inCase C-234/06 P Il Ponte Finanziaria[2007] ECR I-7333 . 80. According to that case-law, there can be said to be a ‘series or a ‘family’ of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark (BAINBRIDGE, paragraph 123). In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion (BAINBRIDGE, paragraph 124). When there is a ‘family’ or a ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks (Il Ponte Finanziaria, paragraph 63). 81. However, according to the above case-law, the likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if both of two conditions are satisfied. First, the earlier marks forming part of the ‘family’ or ‘series’ must be present on the market. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That might not be the case, for example, where the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content (BAINBRIDGE, paragraphs 125 to 127).” (BAINBRIDGE, paragraphs 125 to 127).”
“Article 9(1)(b) and (c) of Regulation No 207/2009 must be interpreted as meaning that where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision.”
“As a happy Easyjet customer, I thought I’d let you know of this site. [link to uk.easyroommate.com] It would be better if there was an incentive of two free return flights to any destination on the easyjet network when submitting a link. Hint hint!!”
“EasyRoommate.com Nice and orange too. Are you going to shut them down?”
“Here a big company of brand thieves: Easyroommate.com They advertise with the same color as Easy Group and even use ‘Easygroup’ as their brand, but call it ‘Easyroommate group’, which does not exist: Here some examples: 1. FlatmateWorld is part of the EasyRoommate Group - the world’s largest shared accommodation network. http://wwwstreathamlifeco.uk/modules/mylinks/singlelinkphp? cid=2&li&181 2. Easyroommate logo on homepage of uk.easyroommate.com 3. Easyroommate with partners: http://www.propertyfinder.com/property/flats/rent/L9390 http://www.netlettings.co.uk/easyroommate.htm http://www.eightydays.co.uk/travel/room-torent/Boston-Share/ There are several more examples. This is just a small part of their whole UK Easy network. Good luck”
“I take it you are aware of … http://uk.easyroommate.com/”
“[link to www.easyroommate.com] This website originally had a orange website, but has changed. I was under the impression that this was as part as easyGroup. [sic]”
“Oh, and please say Easy… haven’t taken over everything. The ad to the right of this box is for EasyRoommate.com…I mean, yeah, could be important, but isn’t it taking the Easy group too far =). And I thought they couldn’t go further than easyPizza…”
“Two things. 1: WHY does it come up with easyjet.com every time I try to go onto easyroommate.com, I NEVER USE EASYJET!”
“I travelled to Berlin in January and I stayed at one of your hotels, easyHotel Berlin Hackescher Markt. Since then, two charges have been made to my bank from one of your hotels EasyRoommate London GB. On 12 May there was a charge for 22.90 and on 30 January for 19.90 euros. Could you resolve this or provide me with an explanation?”
“I am an annual subscription customer of Easyroommate. I paid my first annual subscription on4th January 2009 , by Amex card. An unknown merchant began taking£10.00 per month from my Amex card in March 2009. The merchant was Shopperdiscount.co.uk. I didn’t notice these to begin with, as the amount was small. I then spoke to Amex about fraudulent withdrawals, on the phone, and was asked to write to them. It took several weeks for them to write back. I then spoke to them on the phone again. Amex told me that Shopperdiscount.com had been introduced as a direct debit payee by Easyroommate. I’m sure you will tell me that when I paid my subscription, I signed up for Shopperdiscount. If I did, & I do not remember doing so, I certainly would not have signed up voluntarily. I don’t even know what Shoppersdiscounts are supposed to be doing for me! I am speculating that this is a website scam to dupe unwary Easyroommate customers into an unrelated direct debit commitment. I don’t like this sort of thing. If it’s not illegal, it should be, & I’m sure it soon will be. Could you please explain why the Easy group is involved with this sort of sharp practice? Also what are you going to do to compensate me for the£30.00 this scam has cost me for no service in return?”
“My name is [SC] my husband to be went missing on 19 SEP 10 his name is [AW] he is … years old and I have found out he has made a payment to easykamer and would desperately like to know if you could help me located him. I have also found out that he has bought an easyjet ticket so I think he may be somewhere in the Netherlands renting a room/flat. He suffers from manic depression …”
“Secondly: when you send me one of these messages of yours, you tell me to click on the link. I click and click but nothing ever opens for me. I have just been dealing with easyjet, who are telling me to click on the link and it’s all fine. With you, as long as two years ago, I had the same problems and unfortunately I tried again today and I’m having the same problems. I am an advanced member … advanced where???”
“Hi Solange, how are you? I am contacting you, because I have received emails from easy.com with your name. Because I am interested in a vacancy that is available from the beginning of July, I have already tried both telephone and email, but I have obtained no reply. Could you please see whether this vacancy is still available … ”
“… for Gawd’s sake ask Stelios (!) to fix your site with some filtering system … So why write at all? Just because may be in [sic] might get through to an Easy webdesigner who agrees. … Landlords like need a website like you to do that filtering for me. Then charge away! Kerching!! And be properly Easy for me.”
“I have not received any help from easyJet piso up until now … The problem is that I cannot view properties … I hope my payment has not been a waste of money … Thank you.”
“I work in Sabadell and I would like to find a room and to know how the easy.com services work.” 282. Counsel for W3 submitted that it was unclear what the sender was referring to by “easy.com”
“24. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector. 25. It cannot be inferred from either the letter or the spirit of Article 5(2) of the Directive that the trade mark must be known by a given percentage of the public so defined. 26. The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. 27. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.”
“42. Admittedly, Regulation No 207/2009 and the Court’s case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions. 43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.”
“As regards detriment to the repute of the mark, also referred to as ‘tarnishment’ or ‘degradation’, such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.”
“As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.”
“44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69). 45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark. … 49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.”
“…objectified women and implied that they could be bought on the Vivastreet website, which was likely to cause serious or widespread offence… it was socially irresponsible to place the ads in outdoor media because they were likely to be seen by children … We concluded that …. the ads were likely to cause serious or widespread offence and that they were unsuitable for public display.”
“We’ve been reflecting on the relatively high awareness of the brand currently. We mustn’t rule out the very real possibility that those surveyed may have thought of easyproperty.com and assumed a relationship to your business. We did a similar exercise for the investment bank Rothschild and some clearly got them mixed up with cigarette manufacturer Rothmans – stating associations with formula 1 in the 1990s. The Easy Group do so much – flight, hotels, car hire, buses – that a big chunk of that 32% might just be people who think they have heard of you, but are actually thinking of them. Does that make sense?”
“Limitation in consequence of acquiescence 1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4 (2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used , unless registration of the later trade mark was applied for in bad faith. 2. Any Member State may provide that paragraph 1 shall apply mutatis mutandis to the proprietor of an earlier trade mark referred to in Article 4(4)(a) or an other earlier right referred to in Article 4(4)(b) or (c). 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.”
“34. … according to the Court’s case-law, the provisions of Directive 89/104, and in particular Article 9 thereof, indicate that the purpose of the directive is generally to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their goods and services, on the other (Case C-145/05 Levi Strauss[2006] ECR I-3703 , paragraphs 28 and 29). … 41. First, it is clear that, in the majority of language versions of Directive 89/104, the same word is used both in the eleventh recital and in Article 9(1) of the directive to designate ‘acquiescence’. The fact that the English language version uses the words ‘tolerated’ in the eleventh recital and ‘acquiesced in’ in Article 9(1) is immaterial since, as pointed out by the United Kingdom Government in its written observations, the use of the word ‘tolerated’ does not imply that a less restrictive interpretation of Article 9(1) should be adopted. 42. Next, it must be observed that the verb ‘acquiesce’ has several usual meanings in everyday language, one of those signifying ‘allow to continue’ or ‘not prevent’. 43. ‘Acquiescence’ is therefore not the same as ‘consent’, as referred to in Article 7(1) of Directive 89/104, which must be so expressed that an intention to renounce a right is unequivocally demonstrated (see Zino Davidoff and Levi Strauss, paragraph 45). 44. As observed by the Advocate General in point 70 of her Opinion, referring in particular to the Danish and Swedish language versions of Article 9 of Directive 89/104, the characteristic of a person who acquiesces is that he is passive and declines to take measures open to him to remedy a situation of which he is aware and which is not necessarily as he wishes. To put that another way, the concept of ‘acquiescence’ implies that the person who acquiesces remains inactive when faced with a situation which he would be in a position to oppose. 45. For the purposes of Article 9(1) of Directive 89/104, that concept of ‘acquiescence’ must therefore be interpreted as meaning that the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use. 46. That interpretation is supported by the context of Article 9(1) of Directive 89/104 and by the objectives of the directive. 47. First, the eleventh recital of that directive states that the proprietor of the earlier trade mark must have ‘knowingly tolerated’ the use of a trade mark subsequent to his own for a substantial length of time, in other words ‘intentionally’, ‘in full knowledge of the facts’. The eleventh recital also states that the interests of the proprietor of an earlier trade mark must not be ‘inequitably’ prejudiced. As observed by the Advocate General in point 72 of her Opinion, it would be inequitable if the proprietor of the earlier trade mark were to be excluded by limitation from seeking a declaration of invalidity or opposing the use of an identical later trade mark, in circumstances even where he was not in a position to do so. 48. Second, as stated above in paragraph 34 of this judgment, the objective of Directive 89/104 is to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function and the interests of other economic operators in having signs capable of denoting their goods and services. That objective implies that, in order to safeguard that essential function, the proprietor of an earlier trade mark must be capable, in the context of the application of Article 9(1) of that directive, of opposing the use of a later trade mark identical with his own. 49. It must be added that, as stated by the European Commission, the effect of any administrative action or court action initiated by the proprietor of the earlier trade mark within the period prescribed in Article 9(1) of Directive 89/104 is to interrupt the period of limitation in consequence of acquiescence. 50. In the light of the foregoing, the answer to parts (a) and (b) of the first question is that acquiescence, within the meaning of Article 9(1) of Directive 89/104, is a concept of European Union law and that the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark identical with that of the proprietor if that proprietor was not in any position to oppose that use.”
“1. The Community trade mark courts shall apply the provisions of this Regulation. 2. On all matters not covered by this Regulation, a trade mark court shall apply its national law, including its private international law. 3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State where it has its seat.”
“In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed.” 360.Article 15(h) of the Rome II Regulation provides: “The law applicable to non-contractual obligations under this Regulation shall govern in particular: … (h) the manner in which an obligation may be extinguished and rules of prescription and limitation, including rules relating to the commencement, interruption and suspension of a period of prescription or limitation.”
“Article 55 Application for revocation or for a declaration of invalidity 1. An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office: … (b) where Article 52(1) applies, by the persons referred to in Article 42 (1); … Article 42 Opposition 1. Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8: … (c) by the proprietors of earlier marks or signs referred to in Article 8 (4) and by persons authorized under the relevant national law to exercise these rights.”
“… we wanted the assets out of the Inc because of the double taxation problems. We made up a plan to transfer them and we transferred the assets to the LLC.”
“[W3] agrees to purchase from [DMISL], and [DMISL] agrees to sell, convey, transfer, assign and deliver, or cause to be sold, conveyed, transferred, assigned and delivered, to [W3] at the Closing, free and clear of all liens, all of [DMISL]'s right, title and interest in and to the Software for use in the Territory (the ‘Purchased Assets’).”
“Each of [Mr Pons] and [DMISL] hereby confirms their respective earlier assignments (and to the extent such intended assignments may have been defective, hereby assigns) to [W3] of all their respective property, rights, interests, claims and liberties in, and in relation to, the Trademark and the Business ... ”
“Class 35: Database management; Provision of computerised advertising services; Provision of space on websites for advertising goods and services; Flatshare matching services; Advertising relating to flatshares, all being business services. Class 36: Real Estate affairs; Arranging of accommodation (leasing, rental and permanent); Services for arranging accommodation; Apartment locating services for others; Real estate listing services. Class 43: Accommodation services relating to flatshares; Arranging of accommodation; Arranging and matching services for accommodation location and flatshares, houseshares and other shared accommodation; consultancy relating to accommodation.”
“Class 35: Database management; Provision of computerisedadvertising services; Provision of space on websites foradvertising goods and services; Flatshare matching services; Advertising relating to flatshares, all being business services. Class 36: Real Estate affairs; Arranging of accommodation(leasing, rental and permanent); Services for arrangingaccommodation; Apartment locating services for others; Realestate listing services. Class 43: Accommodation services relating to flatshares; Arranging of accommodation; Arranging and matching services for accommodation location and flatshares, houseshares and other shared accommodation; consultancy relating toaccommodation.”
“(1) Where a person threatens another with proceedings for infringement other than- (a) the application of the mark to the goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c)the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section. (2) The relief which may be applied for is any of the following- (a) a declaration that the threats are unjustifiable, (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by reason of the threats; and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.” (a) the application of the mark to the goods or their packaging, (b) the importation of goods to which, or to the packaging of which, the mark has been applied, or (c)the supply of services under the mark, any person aggrieved may bring proceedings for relief under this section. (b) an injunction against the continuance of the threats, (c) damages in respect of any loss he has sustained by reason of the threats; and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.”
“You are trading as EASYROOMMATE through your website at www.easyroommate.co.uk (which redirects to easyroommate.com) (‘the Sign’). … Your get-up is similar to easyGroup’s livery … The Sign at the bottom of your home page is entirely in orange … You are also operating in a similar field as some of the licensees of the easy Brand such as easyHotel, easyOffice and easyJet. … Our client is aware that members of the public are being confused and believe the services provided by you originate from it. … Our client is aware that your services are being advertised in the same space as the services of its licensees … This clearly will cause even greater confusion especially considering that the Sign appears in orange. We have advised easyGroup that it will succeed in challenging your use of ‘EasyRoommate’ under Article 9 of Council Regulation 207/2009 … The use of your disclaimer is irrelevant when it comes to assessing trade mark infringement … easyGroup can therefore seek appropriate relief, through the Courts, including an order to restrain your use of the Sign … You should be aware, in this context, that easyGroup spends significant sums of money around the world preventing third parties infringing its rights and will not hesitate to take further action against you should you not meet its demands. easyGroup therefore requests that you sign and return the attached undertakings (see Annex 7) within 14 days of the date of this letter. If you do not do this, easyGroup will take whatever steps are necessary to protect its brand including but not limited to commencing proceedings against you … ”
“35. At a time presently unknown to the Claimant, but believed to be around 2002, the EasyRoommate site expanded so as to offer flat and house sharing opportunities in Europe. In particular, internet visitors to the site have been and remain able to select the United Kingdom as a country, whereupon they are taken to page http://uk.easyroommate.com/ (‘the UK Website’) which offers flat and house sharing opportunities in the United Kingdom. Such page is headed … 38. In the premises, the Defendants are targeting the services offered through the UK Website as aforesaid at users in the United Kingdom. 40. By reason of the foregoing, the Defendants have used and continue to use the signs EasyRoommate/easyroommate/ EASYROOMMATE (hereafter collectively ‘EasyRoommate’) for their business and services in the United Kingdom, and the services offered through that business are specifically directed at persons in the United Kingdom. … 45. In the premises, the Defendants have used in the course of trade a sign where, because of its similarity to one or more of the Trade Marks and the identity or similarity of the services covered by such Trade Marks … and those in respect of which such sign is used, there exists a likelihood of confusion. … AND THE CLAIMANT CLAIMS: 1. An injunction to restrain the Defendants, where acting by their directors, officers, servants, agents or otherwise howsoever, from doing the following acts or any of them in the course of trade in the United Kingdom: 1.1 trading under or by reference to the name ‘EasyRoommate’ or any other name or names colourably similar thereto; 1.2 trading or offering services under or by reference to names commencing ‘Easy’ and followed by another word or words appropriate to the services offered, so as to form a new word; 1.3 infringing Community Trade Marks…” offer flat and house sharing opportunities in Europe. In particular, internet visitors to the site have been and remain able to select the United Kingdom as a country, whereupon they are taken to page http://uk.easyroommate.com/ (‘the UK Website’) which offers flat and house sharing opportunities in the United Kingdom. Such page is headed EASYROOMMATE (hereafter collectively ‘EasyRoommate’) for their business and services in the United Kingdom, and the services offered through that business are specifically directed at persons in the United Kingdom. AND THE CLAIMANT CLAIMS: 1.1 trading under or by reference to the name ‘EasyRoommate’ or any other name or names colourably similar thereto; 1.2 trading or offering services under or by reference to names commencing ‘Easy’ and followed by another word or words appropriate to the services offered, so as to form a new word; 1.3 infringing Community Trade Marks…”
“2. Your infringing activities You continue to offer property rental services in the UK, EC and elsewhere under the name ‘EasyRoommate’ and the device .., These activities are primarily offered through the website at www.easyroommate.com (the ‘Website’). We are aware that you have registered numerous domain names which include ‘EasyRoommate’ including www.easyroommate.co.uk. … For the reasons explained below, offering those service in the course of your business under the name and/or device above (the ‘Infringing Signs) infringes our client’s intellectual property rights. Action is required by you to avoid the need for legal proceedings. … 3. Actions required In order to avoid legal action, please sign and return to us a copy of the undertakings enclosed at Annex 3 … … We would like to clarify that our client has no intention of stopping you from operating a legitimate business provided that, in compliance with the requested undertakings, you operate under a name that is clearly different from the Infringing Signs and do not represent that your business is in any way connected to or endorsed by easyGroup.”