“Our clients are anxious to resolve this matter without recourse to litigation and therefore request that you provide them with signed undertakings in the form attached. In any event our clients fully reserve their rights.”
“We hereby undertake, whether by our directors, officers, servants, agents, or otherwise howsoever as follows: 1. forthwith to remove the present livery on our letterhead incorporating white characters printed on an orange background; 2. not hereafter to use any promotional material, letterheads or other material relating to our business which incorporates a livery with white characters on an orange background or any livery confusingly similar thereto; 3. forthwith to deliver up or obliterate upon oath all promotional material, letterheads and other material in our possession, custody or control that would offend against the foregoing undertakings.”
“Despite our request to Easy Offices to change the livery of your letterhead, apparently, you have failed to do so. Furthermore, our clients have recently discovered that, first, the Easy Offices website at www.easyoffices.com features (like your letterhead) white lettering against an orange background and, secondly that you are promoting Easy Offices by way of advertising on FT.com, again using white lettering against an orange background.”
“Our clients are not satisfied by your responses to the assertions made in our client’s letter of11 November 2002 . Our clients therefore reserve all their rights in this matter.”
“1. The parties sought, or accepted, suspension of the invalidation proceedings pending the outcome of the revocation proceedings. 2. This created a reasonable expectation that the parties accepted that the outcome of the revocation proceedings would be determinative of the invalidation proceedings. … The decision to treat the invalidation applications as withdrawn consequent on the revocation of [the BAA mark] from June 2015 was not therefore irregular. The use of the word ‘withdrawn’ as opposed to ‘refused’ or ‘struck out’ is irrelevant because the registrar’s intention was clear. The decision to treat the application as withdrawn was a final decision in the invalidation proceedings.”
“1. The EU trade mark courts shall apply the provisions of this Regulation. 2. On all trade mark matters not covered by this Regulation, the relevant EU trade mark court shall apply the applicable national law. 3. Unless otherwise provided for in this Regulation, an EU 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 in which the court is located.”
“(2) Subject to paragraphs (3) and (4), the provisions contained or referred to in Chapter 10 of the EUTMR (with the exception of Articles 128(2), (4), (6) and (7) and 132) continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day. (3) Where the pending proceedings involve a claim for infringement of an existing EUTM, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing EUTM, the EU trade mark court may grant an injunction to prohibit unauthorised use of the comparable trade mark (EU) which derives from the existing EUTM. (5) Where the pending proceedings involve a counterclaim for the revocation of, or a declaration of invalidity in relation to, an existing EUTM, the EU trade mark court may revoke the registration of the comparable trade mark (EU) which derives from the existing EUTM or declare the registration of comparable trade mark (EU) which derives from the existing EUTM to be invalid.”
“ Jurisdiction, recognition and enforcement of judicial decisions, and related cooperation between central authorities 1. In the United Kingdom, as well as in the Member States in situations involving the United Kingdom, in respect of legal proceedings instituted before the end of the transition period … the following acts or provisions shall apply: … (b) the provisions regarding jurisdiction of Regulation (EU) 2017/1001, …”
“The provisions of this Agreement and the provisions of Union law made applicable by this Agreement shall produce in respect of and in the United Kingdom the same legal effects as those which they provide within the Union and its Member States.”
“As from1 January 2021 , UK rights cease ex lege to be ‘earlier rights’ for the purposes of inter partes proceedings (opposition, EUTM invalidity, RCD invalidity). Further, the territory and public of the UK will no longer be relevant for the purposes of assessing a conflict between an earlier EU right and a later EUTM, EUTM application or RCD. Regardless of their procedural status at first instance, actions in inter partes proceedings based solely on UK rights that are still pending on1 January 2021 will be dismissed for lack of valid basis. Each party will be ordered to pay their own costs.”
“it has previously been held that, in order to assess whether there exists a genuine relative ground for opposition, it is appropriate to look at the time of filing of the application for an EU trade mark against which a notice of opposition has been filed on the basis of an earlier trade mark. It is therefore necessary to examine the various aspects of the earlier mark as they were at the time of filing of the application for an EU trade mark which is opposed by the earlier mark (judgment of17 October 2018 , Golden Balls v EUIPO — Les Éditions P. Amaury (GOLDEN BALLS) , T‑8/17, not published, EU:T:2018:692 , paragraph 76). The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State, as referred to in Article 8(2)(a)(ii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) of Regulation 2017/1001) and Article 42(3) of that regulation, at a time after the filing of the application for registration of the EU trade mark against which a notice of opposition has been filed on the basis of that earlier mark, in particular following the possible withdrawal of the Member State concerned from the European Union in accordance with Article 50 TEU without specific provision having been made in that respect in any agreement concluded under Article 50(2) TEU, is therefore, in principle, irrelevant to the outcome of the opposition.”
“58. It should be noted that the existence of a relative ground for opposition must be assessed as at the time of filing of the application for registration of an EU trade mark against which a notice of opposition has been filed (see judgment of30 January 2020 , Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE) , T‑598/18, EU:T:2020:22 , paragraph 19 and the case-law cited). 59. The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State at a time after the filing of the application for registration of the EU trade mark, in particular following the possible withdrawal of the Member State concerned from the European Union, is in principle irrelevant to the outcome of the opposition (see judgment of23 September 2020 , Bauer Radio v EUIPO – Weinstein (MUSIKISS) , T‑421/18, EU:T:2020: 433, paragraph 35 and the case-law cited). 60 . In the present case, the only relevant date for the purposes of the examination of the opposition filed by the intervener under Article 41 of Regulation No 207/2009 is therefore5 March 2010 , the date on which the application for registration of the mark applied for was filed and the date on which the United Kingdom was still a member of the European Union. 61 . It follows that, in the present case, the withdrawal of the United Kingdom from the European Union has no bearing on the protection enjoyed by the international registration designating the European Union of the word mark LE DELIZIE ZARA, insofar as it had effects in, inter alia, the United Kingdom, with the result that it could validly form the basis of an opposition (judgment of23 September 2020 , MUSIKISS , T‑421/18, EU:T:2020:433 , paragraph 36).”
“as regards the various references to the provisions and the case-law relating to applications for a declaration of invalidity, the Court has already had occasion to point out that those provisions and that case-law are not necessarily relevant in the context of a case concerning opposition proceedings (see, to that effect, judgment of6 October 2021 , Indo European Foods v EUIPO … T-342/20, under appeal, EU:T:2021:651, paragraph 22).”
“… once a cause of action has been held to exist or not to exist, that outcome may not be challenged by either party in subsequent proceedings. This is ‘cause of action estoppel’. It is properly described as a form of estoppel precluding a party from challenging the same cause of action in subsequent proceedings.”
“(1) Cause of action estoppel is absolute in relation to all points which had to be and were decided in order to establish the existence or non-existence of a cause of action. (2) Cause of action estoppel also bars the raising of points essential to the existence or non-existence of a cause of action which were not decided because they were not raised in the earlier proceedings, if they could with reasonable diligence and should in all the circumstances have been raised. … If the relevant point was not raised, the bar will usually be absolute if it could with reasonable diligence and should in all the circumstances have been raised.”
“ Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interest of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. … It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before.”
“Res judicata and abuse of process are juridically very different. Res judicata is a rule of substantive law, while abuse of process is a concept which informs the exercise of the court’s procedural powers. In my view, they are distinct although overlapping legal principles with the common underlying purpose of limiting abusive and duplicative litigation.”
“If a corporate group such as L’Oréal chooses to arrange its affairs, no doubt for good reason, in such a way that matter such as trade mark oppositions, as well as applications and the holding of registered trade marks, are conducted by one company, for the benefit of others in the group, and others then use marks of which the first is the registered holder, or other marks, not yet registered, of which the first would be the holder if a registration was obtained, then it seems to us that it might well be consistent with what Sir Robert Megarry V-C said in Gleeson v J Wippell & Co Ltd[1977] 1 WLR 510 , 515 (approved by Lord Bingham in Johnson v Gore Wood & Co[2002] 2 AC 1 , 32) to regard any constraint on the first, whether by way of cause of action estoppel, issue estoppel or abuse of process, as applying also to the second as its privy. The proposition enunciated by Sir Robert Megarry V-C was that ‘having due regard to the subject matter of the dispute, there must be a sufficient degree of identification between the two to make it just to hold that the decision to which one was a party should be binding in proceedings to which the other is a party.’”
“As discussed, rather than continue with the four actions listed above our client is willing to withdraw them in return for your confirmation that you will not request any costs award (and agree that no order as to costs is made).”
“I am pleased to confirm that we are happy for your client to withdraw the above actions on the basis that each party pays its own costs (we will not request costs and agree that no order as to costs be made).”
“We write in relation to the above referred to invalidity action. On behalf of the Applicant for invalidation we request that the invalidity action be withdrawn. The parties have agreed that the proceedings should be concluded with no order as to costs.”
“Field Fisher Waterhouse approached us with straightforward offer to withdraw if we agreed that each party would bear own costs - we agreed” followed by a further email a week later adding that: “Mark Holah of Field Fisher Waterhouse called me to make the settlement proposal so there is nothing in writing. I can’t remember the exact wording he used but I distinctly remember being surprised by what he said which was something along the lines of there being no point in wasting time on the matter.”
“(1) Only the persons specified in paragraph (2) may make an application for a declaration of invalidity on the grounds insection 47(2) of the Trade Marks Act 1994 (relative grounds). (2) Those persons are - … (b) in the case of an application on the ground in section 47(2)(b) of that Act, the proprietor of the earlier right.”
“Article 5 shall not apply to an application for a declaration of invalidity which relates to a trade mark the application for the registration of which was published before the coming into force of this Order.”
“Counsel also argued that the claimant was entitled to focus its attack in the Registry proceedings without being penalised subsequently, and that it was relevant that it would only recover nominal costs in the Registry proceedings even if successful. I do not accept those arguments either. If a party focuses its case on what it believes to be its strongest points, that does not entitle it to come back with further proceedings if it fails. The costs argument is, if anything, against the claimant. Having chosen to bring proceedings in a low-cost and low cost-recovery forum, the claimant had no reason not to include every available claim in the proceedings. As Counsel accepted, it is common for litigants in Registry proceedings to rely upon a multiplicity of grounds.”
“What, in my understanding, is not permissible is for a party with more than one cause of action or more than one ground of defence to advance one of them and then keep the others in reserve for a rainy day. That seems to me to be in effect what the defendants are seeking to do here. … They simply abandoned the defence, without any attempt to reserve their rights, and did not pursue it, with the result that the learned judge upheld the validity of the patent as amended and dismissed the defendants’ counterclaim seeking a declaration of invalidity. In those circumstances it would, in my judgment, be the most obvious abuse of process to allow a defence to be raised which could, and in my judgment, plainly should have been raised then.”
“Q. Is it right that you had the authority to move around the rights as you wished, so when I say ‘move around’, take them from one Regus company and put them to another like Pathway? Is that within your authority? A. Yes. I would say it probably is, yes. Q. And it was in your authority to decide who would issue the proceedings, in other words, as a result of that, you could transfer the rights from one party to another and they would step into the shoes of the applicant for invalidity or claimant in a trade mark case or whatever; correct? A. Yes, I guess I would. I suppose that is right, yes, actually under advice, obviously.”
“Q. Everything that was done, transfers, decisions on whose part to bring proceedings, all of that was for the benefit of one or other Regus entity or an associated entity; correct? A. Well, presumably it would not be done unless there was a benefit for the group as a whole and therefore for our shareholders as a whole. I accept that.”
“The underlying principle of ex turpi causa is that the behaviour of the party has been so heinous that the court will not assist it. In the case of trade marks and passing off, occasionally the courts have held that the claimant’s rights have been built up or supported fraudulently. … Relevant considerations include the following. First, whether or not a party’s behaviour has been so bad as to merit exclusion from protection by the court is an issue of fact. Secondly, the wrongdoing has to be substantial and go to the heart of the right sued on. In my view it is unarguable that trade mark infringement without more amounts to wrongdoing of such a level of depravity as to engage the doctrine. … The only wrongdoing alleged is the fact of infringement of the ‘392 mark (assuming, of course, that it is infringed). … there is no suggestion of dishonesty or flagrancy here, not least because it appears that Inter Lotto was using its mark months before Camelot applied to register its mark and a year before Camelot started to use it.”
“… before us Mr Silverleaf has not based his argument on the ‘ ex turpi causa ’ (or ‘illegality’) principle. In my view he is right not to do so. The difficulties in determining the scope of the principle are notorious. … However, the starting point is criminal illegality, or (possibly) ‘other reprehensible or grossly immoral conduct’ … As the judge observed … there is some precedent for its application in the context of trade mark and passing off, where there has been misrepresentation amounting to ‘a fraud on the public.’ However nothing of that kind is alleged here.”
“If the same mark is used in relation to goods of two entirely different natures, of kinds which no ordinary person would suppose could be connected, then the use of the mark by one party is unlikely to be found to amount to a representation that its goods are from the same trade origin as those of the other user.”
“1. The allegation that a trade mark has been applied for in bad faith is one of the absolute grounds for invalidity of an EU trade mark which can be relied on before the EUIPO or by means of a counterclaim in infringement proceedings: Lindt at [34]. 2. Bad faith is an autonomous concept of EU trade mark law which must be given a uniform interpretation in the EU: Malaysia Dairy Industries at [29]. 3. The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law, i.e. the course of trade and having regard to the objectives of the law namely the establishment and functioning of the internal market, contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin: Lindt at [45]; Koton Mağazacilik at [45]. 4. The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. 5. The date for assessment of bad faith is the time of filing the application: Lindt at [35]. 6. It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40]. 7. Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. 8. Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. 9. For that purpose it is necessary to examine the applicant’s intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41]–[42]. 10. Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant’s objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. 11. Bad faith can be established even in cases where no third party is specifically targeted, if the applicant’s intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Magazacilik at [46]. 12. It is relevant to consider the extent of the reputation enjoyed by the sign at the time when the application was filed: the extent of that reputation may justify the applicant’s interest in seeking wider legal protection for its sign: Lindt at [51] to [52]. 13. Bad faith cannot be established solely on the basis of the size of the list of goods and services in the application for registration: Psytech at [88], Pelikan at [54].”
“The following is a quick summary of what we have got and not got for the very key names for the new ideas. At the end of the email is what I advise that we need to spend to get our protection for these ideas to a reasonable level.”
“19. For the tribunal to determine in relation to what goods or services there has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. … 22. … it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public.”
“(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark … (2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark … (3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin … (4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use … (5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark … (6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use … (7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule … (8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …”
“We created Easy Offices for one simple reason. To make it easier for people to find great places to work. To gather every square foot of workspace in the country and put it all under one roof.”
“ (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public. ”
“(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.”
“i) Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated. ii) This will be the case where the trade mark serves to indicate the goods or services of either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s use, because the trade mark does not denote the claimant alone. iii) However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant’s goodwill.”
“First, the requirement that the use be in accordance with honest practices constitutes the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor. Secondly, all circumstances should be considered when ascertaining whether or not the use is honest, including whether the defendant can be regarded as unfairly competing with the proprietor of the trade mark. Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices. Fourthly, a likelihood of confusion can be in accordance with honest practices if there is a good reason why such confusion should be tolerated. Finally, whether the defendant ought to have been aware of the existence of substantial confusion or deception is a relevant factor.”
“New home page is not converting as well as old one, as mentioned, I think this is more to do with people thinking the old website was Stelios more than this website is.”
“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.”
“Provided your client’s business remains branded distinctly from our ‘easy’ businesses, any protectable goodwill will remain undamaged, since there is no scope for confusion between our respective businesses.”
“It is clear that you are offering and intend to offer a service which is identical or similar to our client’s service, using a name that is actually or very nearly identical to our client’s. … Our client cannot allow the inevitable likelihood of confusion and association between our client’s services and your services.”
“A defence of acquiescence is available where a person is aware that his rights are being breached and is in a position to complain about the breach, but does not protest or do anything about it. He stands by. The longer he does nothing, the stronger the evidence that he has assented to what has been done or to what is still being done. His failure to protest or to do anything leads the other party, who might have stopped doing what he was doing if he had received an earlier objection, to believe that there is no objection to what he has done, or, where the inactivity of the claimant goes on for a long time, to continuing to do what he has been doing. There comes a point at which the court can hold that it is too late to assist the claimant’s enforcement of his rights, because it is unreasonable and unjust for him to complain about their infringement. The longer the time that passes before the claimant takes action, the stronger the evidence of acquiescence in the continuing activities of the defendants and the greater the difficulty in turning the clock back to the time when the claimant first had an opportunity to protest and seek redress for the infringement of his rights.”