On September 11, the High Court ruled against easyJet on one of its trade mark disputes in favour of Easyfundraising. The large airline company is a part of the easyGroup which has been trying to restrict the use of ‘easy’ by smaller companies in their brands.
Easyfundraising, a service that helps users raise funds through online shopping, faced challenges from easyGroup on the grounds that the similarity in names could confuse customers about brand ownership. easyGroup claimed this confusion gave Easyfundraising an unfair advantage by attracting customers who mistakenly thought the organisation was part of easyGroup. However, no evidence of such confusion was presented, resulting in Easyfundraising’s victory.
This ruling has instilled hope for other small businesses that have been pressured to rebrand by the easyGroup. easyGroup has established numerous subsidiaries, including easyHotel and easyMoney, as well as niche ventures like easyWoo, a dating site. One notable case is the band Easy Life, which had to rebrand to ‘Hard Life’ despite having established its name ten years before easyGroup was formed.
What this means within Intellectual Property law
easyGroup brought a claim for infringement against 9 registered trade marks under S10(2) and S10(3) of the Trade Marks Act 1994 (TMA 1994).
Under S10(2), it was asserted Easyfundraising’s name and other handles were identical or similar and were used in relation to similar or identical goods or services. This was rejected because the visual differences of the signs meant they were not considered sufficiently similar. The court also held the services offered in relation to the signs also bore insufficient similarity.
Under S10(3), easyGroup claimed an infringement was made as the trade mark has a reputation in the UK and the use of the sign, ‘Easyfundraising’, takes unfair advantage of the repute of the trade mark. Whilst the court held the mark had a reputation, it was rejected because no evidence could be shown to demonstrate damage to reputation or unfair advantage to the defendant despite 10 years of coexistence.
The court also partially revoked the easyJet and easyLife marks and wholly revoked the easy.com mark, all for lack of use.
This ruling meant two things for companies looking to obtain a trade mark:
- Courts will revoke marks if they are not used (following the case of easyGroup v Easylife 2021).
- If you choose to register a common, non-distinctive word from English vocabulary, the courts are less likely to be persuaded that the mark has been infringed.
How Berry Smith can help navigate Intellectual Property laws
Since 2017 there has been a notable increase in legal disputes over trademarks, and as more companies emerge, the conflicts continue to grow. The easyGroup’s colossus of trademark battles illustrate the importance of being meticulous when creating a brand, as even the smallest details – like colours, sounds and fonts – can lead to legal challenges.
Trademarks are crucial for businesses as they prevent third parties from using the same or similar name for related goods and services, helping to establish a strong business identity. They also protect your brand from infringing on existing trademarks, which can prevent legal problems down the line. Additionally, trademarks are important proof that your brand is not just recognised but owned – a valuable commercial asset that is highly valued by investors or purchasers.
Following Brexit, there has been a slight change to EU trade marks as they are no longer protected in the UK. These are still protected however, as a UK comparable was made to ensure continued protection. Businesses wishing to establish a trade mark in both the UK and EU must file separate applications and be represented by a legal practitioner in a member state or a professional representative named on the EUIPO.
At Berry Smith we possess extensive experience in trademark issues and other intellectual property matters, ensuring your business receives the protection necessary for growth. If you have any queries or need any assistance relating to trade marks, please do not hesitate to contact us at commercial@berrysmith.com or on 029 2034 5511.