• easyGroup brings claims against W3 in respect of the latter's use of the 'EasyRoommate' name and logo
  • easyGroup's 'EASY' trade mark held to be invalid in respect of advertising and temporary accommodation services
  • easyGroup's claims of trade mark infringement and passing off failed

What's it about?

This case arose out of a long running dispute between easyGroup and W3 Ltd in relation to the latter's use of the 'EasyRoommate' name and logo.

What does it matter?

Arnold J held that the 'EASY' trade mark was descriptive of a quality or characteristic of the services provided by easyGroup. easyGroup had failed to show a sufficient degree of distinctiveness and associated reputation surrounding its trade marks across the EU. Consequently, the 'EASY' trade mark was held to have been invalidly registered in respect of advertising or temporary accommodation services.

Arnold J also held that by the relevant date (June 2009), only the easyJet and easyHotel EU registered trade marks had acquired the necessary degree of distinctiveness and public reputation. Although W3's use of the 'EasyRoommate' name and logo would have led a significant proportion of the public to associate W3 with easyGroup, there was no evidence of any detriment having been suffered by easyGroup, especially due to the fact that easyGroup did not extend its operations into the property sector until 2014.

W3 claimed that easyGroup should be deemed to have acquiesced to the former's use of the 'EasyRoommate' mark due to easyGroup's failure to initiate infringement proceedings. However, Arnold J found that easyGroup's regular letters of complaint to W3 were sufficient to indicate that easyGroup had not acquiesced to the use of the 'EasyRoommate' mark.

Finally, Arnold J dismissed W3's claim of groundless threats of proceedings. Despite the inclusion of widely drafted undertakings, Particulars of Claim and prayers for relief in easyGroup's letters to W3, Arnold J held that a reasonable person would have concluded that easyGroup was only threatening infringement proceedings in relation to W3's use of its marks and logos in the course of the provision of temporary accommodation services.

What next?

This case demonstrates that where a trade mark is found to be descriptive of the product or services to which it relates, the proprietor must show that the trade mark has acquired a sufficient degree of distinctiveness and reputation amongst the public in order for the trade mark to be valid.

W3 Limited v easyGroup Limited and Jean Camille Pons [2018] EWHC 7 (Ch)