National protection, global online infringement
The protection provided by a registered trade mark is limited to preventing infringing use in the country (or countries) of registration. A recent High Court case involving the EASYJET trade mark illustrates the difficulties that can arise when a third party outside the UK exploits the trade mark owner’s reputation online.
The case
As is well known, easyGroup is the registered owner of a large number of “easy-“ trade marks worldwide and has a considerable global reputation in these marks. Its marks include the UK trade mark EASYJET and an EU trade mark for a logo including the word ‘easyFlights’ registered, among other things, for air transportation and freight services. Easy Fly, the defendant in this case, was a company based in Dhaka, Bangladesh, which provided airline cargo services under the name Easy Fly and advertised its services on its website using the name Easy Fly and the logo shown below:
easyGroup argued that the similarity to its trade marks was striking and that use of the Easy Fly name and logo on the website constituted infringement of easyGroup’s UK and EU trade marks. In order to establish the jurisdiction of the English court to hear the case it needed to show that it had a real prospect of succeeding on its claim for trade mark infringement. A key factor in establishing this was to show that advertisements on Easy Fly’s website were targeting the UK or EU.
What constitutes targeting?
The fact that a website is accessible from the UK is not enough to establish targeting – the question is whether average consumers in the UK would consider that the advertisements were targeted at them. Factors which might indicate targeting include the appearance and content of the website, whether it is possible to buy goods and services through it from the UK/EU, the nature and size of the trader’s business and how international it is, the number of visits made by UK/EU consumers, the language and currency used, the mention of telephone numbers with an international code, use of a top level domain which is different from the trader’s home country and mention of an international clientele.
Was there targeting in this case?
The evidence was that Easy Fly was a small cargo airline headquartered in Dhaka, which flew mainly within Bangladesh. It had never offered flights to anywhere in Europe (and gave evidence that it had no plans to do so), and it had never entered into a contract through the website. Against this easyGroup pointed to references on the website to the defendant’s “global reach” including specific reference to Europe and statements on their website and facebook pages that they foresee “greater business opportunities” internationally. The judge (Arnold J) concluded that this was not enough. He dismissed the statement about global reach as “just advertising puff” and the reference to greater international opportunities as merely identifying potential future opportunities. The strongest evidence of targeting in this case was probably the resemblance between the names and logos used by the defendant and easyGroup’s trade marks and get-up, which have a strong presence in the UK and EU. However, although the judge acknowledged that this was a factor to be taken into account, he concluded that it was not sufficient to lead average UK and EU customers to believe that the website was aimed at them. easyGroup was therefore unsuccessful.
Comment
The underlying problem for trade mark owners is that trade mark law is fundamentally territorial whereas leading businesses have global reputations which can potentially be damaged anywhere. A solution in some cases is to register the trade mark widely. However, apart from the expense of such a strategy, this can often only be a partial solution as registration without use – or without the intention to use – may make the trade marks vulnerable to cancellation.
Case: Easygroup Ltd v Easy Fly Express Ltd and another [2018] EWHC
Tom Collins