In a trade mark infringement claim involving easyGroup and Easy Fly, easyGroup appealed the High Court's earlier decision which set aside an order for service outside the jurisdiction of the courts of England and Wales, pursuant to an application made by Easy Fly. The decision hinged on whether Easy Fly had targeted UK consumers. The judge, considering various factors that could indicate targeting, found that Easy Fly had not targeted UK consumers, and therefore easyGroup's appeal was dismissed.[1]

Background

easyGroup is the corporate vehicle utilised by Sir Stelios Haji-Ioannou, founder of the budget airline easyJet. easyGroup owns several registered trade marks, along with any associated goodwill. Many of these trade marks are prefixed by the term "easy-". Examples of these include UK trade mark numbered 2016785 for EASYJET and the device mark EU trade mark numbered 9220799 which includes the word "easyFlights". Both of these were registered in class 39 for the transportation of goods by air.

The company Easy Fly, based in Dhaka, Bangladesh, provides airline cargo services under the sign "EasyFly" and – at the date of issue of the claim – operated from the domain name www.easy-fly-express.com (the "Website").

The branding of the EASYJET mark and the "EasyFly" sign have certain similarities: they both utilise an orange colour for the lettering, appear to be in the same font and both use a mid-word capitalisation for the first letter directly after the "y" in "easy".

As such, easyGroup claimed that Easy Fly's sign infringed its EASYJET and "easyFlights" marks and, in addition, Easy Fly's actions amounted to passing off because, not only was the Easy Fly sign misleading, the Website was accessible in the UK and EU, being easyGroup's area of operation.

In September 2017, easyGroup was granted permission (under Civil Procedure Rules ("CPR") Practice Direction 6B ("PD6B"), which supplements Section IV of CPR Part 6) to serve the Claim Form and Particulars of Claim outside of the jurisdiction. However, in February 2018, Easy Fly applied for the order for service outside the jurisdiction to be set aside. After consideration by the Deputy Master ([2018] EWHC 3155 (Ch)), Easy Fly's application was granted and the claim was dismissed. easyGroup appealed the decision, which appeal went before Mr Justice Arnold on 14 November 2018.

Applicable principles

Since Easy Fly was based in Bangladesh, it had been necessary for easyGroup to seek permission to serve the proceedings outside the jurisdiction.

The three basic criteria to be applied when considering granting permission to serve out of the jurisdiction are that:

  1. there is a serious issue to be tried on the merits of the claim which must have a real, not just fanciful, prospect of success;
  2. there is a good, arguable case that the claim falls within one or more of "the gateways" – being the list of claim and case types for which leave to serve out of the jurisdiction may be given; and
  3. England is clearly the appropriate forum for the trial in all of the circumstances and the court ought to exercise its discretion to permit service in all the circumstances.

The gateways relied upon by easyGroup were, as follows:

  • Paragraph 3.1(2) of PD6B: a claim is made for an injunction ordering the defendant to do or to refrain from doing an act within the jurisdiction;
  • Paragraph 3.1(9) of PD6B: a claim is made in tort where damage was sustained, or will be sustained, within the jurisdiction;
  • Paragraph 3.1(11) of PD6B: the subject matter of the claim relates wholly or principally to property within the jurisdiction, provided that nothing under this paragraph shall render justiciable the title to or the right to possession of immovable property outside England and Wales; and
  • Paragraph 3.1(20(a) of PD6B: a claim is made under an enactment which allows proceedings to be brought and those proceedings are not covered by any of the other grounds referred to in this paragraph.

"Serious issue to be tried"

In order for use of a sign to amount to passing off or infringement of a registered UK or EU trade mark, the use must be targeted at persons in the UK. Easy Fly argued that this claim failed to satisfy the first criterion because it would not have a real chance of success, since Easy Fly did not operate in, nor target its marketing at, the UK.

The principles for assessment for whether the use of a sign was targeted at the UK, and consequently could qualify as infringement of a registered UK or EU trade mark and also amount to passing off, were confirmed as follows.

  1. If a registered UK trade mark appears on a foreign website, it must be asked whether the advertisement is targeting UK consumers.
  2. Mere accessibility from the UK is not sufficient to prove this.
  3. Assessment of whether the sign was targeting the UK must be considered objectively, from the point of view of an average consumer. Accordingly, infringement or passing off within the UK could occur even if the website had not intended to target UK consumers.
  4. When addressing whether the website is justiciable, the UK court must consider all relevant circumstances, including (but not limited to) intention, appearance of the website, functionality of the site and also circumstances beyond the site itself, such as size and nature of the trader's business.

Referring to various earlier decisions[2], the judge held that evidence indicating targeting included:

  • The international nature of the activity
  • Mention of international itineraries
  • Use of an international language or currency
  • Use of international telephone dialling codes
  • Use of intermediaries or services for accessing the site internationally
  • Use of top-level domain names
  • Mention of international clientele

The judge found that:

  • Easy Fly never offered flights to Europe
  • Easy Fly had never entered into contracts with consumers through the Website
  • Easy Fly's aircraft were largely unsuitable for long-haul flights to Europe
  • use of English on the Website was not considered out of the ordinary course of business practice as it is widely spoken in Bangladesh and is the dominant language used on websites globally
  • reference to the international nature of Easy Fly's business was considered advertising puff
  • very little of the traffic on the Website was from a UK or EU source – as at 28 January 2018 of the 514 people who had "liked" Easy Fly's Facebook page, only 0.36% were from the UK and 1.16% were from the EU (amounting to 2 and 6 people respectively)
  • reference to expansion into other markets was not to be regarded as concrete and active proposals but merely advertising puff identifying potential opportunities to which Easy Fly aspired

The judge held that any UK person who came across the Website would likely conclude that it was not aimed at UK customers. Accordingly, Easy Fly was found not to have targeted the UK market and thus for this reason alone the claim would not have a real prospect of success and was likely to fail. Since the claim did not satisfy first criterion, service of the proceedings outside the jurisdiction of the High Court, was unjustified.

Nevertheless, in case he was wrong on this point, the judge went on (by way of obiter dicta) to consider the two other criteria.

"Good, arguable case" and England as appropriate forum

He held that easyGroup had an unanswerable case in respect of one or more of the gateways relied upon.

He further confirmed that, if easyGroup had had a prospect of success, the appropriate forum for the trial of the case would be England.

In cases that require an application for an order to serve outside the jurisdiction, the extent to which the defendant has targeted UK consumers will likely need to be adequately addressed where the claim is dependent upon use via a website. This case provides a comprehensive list of factors which claimants will need to consider, although the list is by no means exhaustive.