Introduction

In this case, the revocation of the Claimant’s trade marks for non-use stood following the dismissal of its appeal in relation to the revocation and its failed infringement claim.

Businesses must ensure that they can show genuine use of their trade marks and monitor potential infringers to fight off revocation proceedings.

Case Summary

The Claimant, easyGroup Ltd, owns various “easy” businesses, including the well-known airline, easyJet. In this particular case, the Claimant tried to enforce its rights under its UK and EU marks for EASYOFFICE (four marks in total), the earliest of which was filed on 8 January 2002.

The Defendants consisted of members of a company group who had brokered serviced office space under the sign “Easy Offices” since March 2000.

The Judge described this case as “the culmination of a 20-year dispute” between the parties, which had involved disputes at the UKIPO, EUIPO and various appeals, and even a defamation proceeding in the High Court.

Consequently, on 15 May 2019, the Claimant issued infringement proceedings against the Defendants on the grounds that the respective parties’ marks and services were identical, such that a claim arises under section 10(1) Trade Marks Act 1994, and/or that the marks and services were similar to the extent that there exists a likelihood of confusion on the part of the public, such that a claim under section 10(2) TMA 1994 arises. The Defendants counterclaimed on the basis of, among other things, revocation on grounds of the Claimant’s non-use of its EASYOFFICE marks (section 46(1)(a) and (b) TMA 1994).

The Claimant’s claim was dismissed on both grounds. The Judge found the marks were not identical and that, given the lack of evidence of actual confusion there was no likelihood of confusion. Weight was given to the lack of evidence of actual confusion produced by the Claimant, which the Judge labelled as “striking” and a “material factor” in this case, and to the Defendants’ long period of honest concurrent use.

The Defendants’ counterclaim succeeded in respect of non-use. The Claimant failed to provide sufficient evidence of genuine use of the EASYOFFICES marks within the relevant 5-year period. Therefore, all four of the Claimant’s trade marks were revoked.

The Claimant’s appeal was dismissed.

Significance of the case

The case highlights the realities of ensuring both that your intellectual property is registered where possible and that it remains enforceable. As ever in IP cases, it is crucial to understand who ‘did it first’ and in this instance it was the Defendant who began using their sign before the Claimant. Simply registering and using a trade mark at the earliest opportunity may help to avoid lengthy and complex disputes.

Businesses should also ensure they continue to make genuine use of their registered trade marks in any 5-year period, or risk revocation proceedings being brought against them, for instance where a third party wants to enter the market or indeed wants to enforce its own existing rights.

Finally, the case highlights the importance of providing evidence of actual confusion to strengthen any argument as to ‘likelihood of confusion’. A lack of actual evidence in circumstances where the parties have been using their respective marks for a long time can prove fatal to the Claimant’s case, as it did here.

JMWatch

JMWatch is a monitoring service that allows us to quickly identify any new trade mark registrations that could potentially infringe your intellectual property rights. The service is used to strengthen businesses’ IP enforcement against infringers.

If you have any questions about this blog or JMWatch, please contact the IP team at ip@jmw.co.uk.