Not so EASY to acquire distinctiveness

A recent judgment from Mr Justice Arnold involved easyGroup as a Defendant is a cautionary tale for brand owners trying to establish acquired distinctiveness of their marks. This complex, 424 paragraph-long judgment addresses a number of key trade mark issues (such as likelihood of confusion, establishing reputation and showing unfair advantage) but this summary will solely focus on the invalidity aspect.

Factual background

In 1999, Mr Pons, associated with the Claimant, expanded his letting agency business called EasyRent to capture the market for residential property-sharing under the name EasyRoommate. EasyRoommate quickly expanded internationally, including the UK. Stelios Haji-Ioannou had by that time founded the low cost airline easyJet and was in the process of setting up a number of companies, which shared the “easy” prefix in their names. The emergence of EasyRoommate on the British market caught easyGroup’s attention and there was a period of intermittent communication in relation to trade mark issues between the parties. After many years, the position remained unsettled and the Claimant decided to turn to the courts, as it claimed the situation with easyGroup was inhibiting its ability to sell the EasyRoommate business.

Among the plethora of other interesting issues surrounding this case, a declaration of invalidity of the EASY trade mark registered for advertising and providing temporary accommodation was sought by the Claimant on the grounds of descriptiveness.

When setting out his analysis on this matter, Mr Justice Arnold first restated the point that the distinctive character of a trade mark is not to be assessed in a vacuum but by reference to (i) the services in respect of which registration has been applied for and (ii) the perception of the average user of those services who is reasonably well-informed, observant and circumspect.

Turning to the parties’ arguments, it was not difficult for the Claimant’s Counsel to show that the word “easy” is very common in the English language. Counsel provided data that it is the 31st most used descriptive adjective and among the top 500 most common words in English. Similarly, the judge shared Counsel’s view that when used in relation to “advertising” and “temporary accommodation”, the word “easy” is conveying the message that the services are easy, i.e. hassle-free, to purchase or use. The use is descriptive; it denotes a particular “quality” or “characteristic” of the service. In the light of these findings, it was for the Defendant to show that the mark had acquired a distinctive character through use. The relevant date for this assessment was 12 October 2017 – when the claim for invalidity was made.

In his analysis, Mr Justice Arnold acknowledged a wide use of “easy-” prefixed trade marks by the Defendant and its licensees, including in respect of the relevant “temporary accommodation” and “advertising” services. Nevertheless, the judgment went on distinguishing between various marks consisting of the “easy” prefix and a second word and the use of the EASY mark on its own. In the latter case, it was accepted that some use of EASY mark has been made in the two years before the relevant assessment date – mainly as part of the expressions “the easy portal” and “the easy family of brands”. This use was on the website, on London taxis and on billboards at Chancery Lane tube station.

However, the Defendant failed to show the use of EASY mark in relation to the services complained of. In particular, Mr Justice Arnold rejected an argument that placing a link on the EASY.COM website to easyHotel or easyJet services amounted to use for “temporary accommodation”. Neither did he agree that the promotion of the Defendant’s licensees’ businesses by the website proved use in relation to “advertising”. To show such use, the advertising services would have to be offered to third parties. Moreover, it remained questionable to Mr Justice Arnold whether consumers would perceive the word EASY on its own, in plain font and regardless of colour, as having a distinctive trade mark character.

In the light of the above, even though easyGroup had shown use of its various trade marks, this did not extend to establishing the acquired distinctiveness of the EASY mark in respect of the relevant services. As a result, easyGroup had its registration of EASY mark invalidated in relation to advertising and temporary accommodation. Going beyond the specific facts and the decision itself, the judgment provides a helpful and rigorous analysis for trade mark use in invalidity proceedings.

Case Ref: W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)