Common English words make bad trade marks – choose something more distinctive, say the trade mark advisors. Although many would regard the building of a family of “easy” prefixed brands as inspired marketing, recent, unsuccessful infringement proceedings brought by easygroup against home and garden retailer Easylife, illustrate, once again, the difficulties in protecting trade marks featuring common English words.
The dispute – Easygroup Ltd v Easylife Ltd and another[i]
Easygroup own numerous registered trade marks starting with the word “easy”, including easyJet and Easygroup. Easylife ran a catalogue and online service aimed primarily at the over sixty-fives market, offering goods for “home, garden, motoring and mobility” to make their life easier. In the course of this business they used a number of names prefixed “easy” including easylife group, easylifegroup.com, easyclean, easy green and easycare. Easygroup objected to this use and commenced proceedings for trade mark infringement to restrain Easylife’s use of such names.
Why was Easygroup unsuccessful on infringement?
The main question on trade mark infringement was whether the average consumer would be confused by Easylife’s use of the “easy” names into believing that there was a connection between Easylife and Easygroup. The fact that Easygroup had built up a family of “easy” marks can support confusion of this sort. However, in this instance, the “easy” element of the marks was dismissed by the judge as being descriptive and not distinctive – or if there was any element of distinctiveness he considered this to be of “low value”. This was an important factor arguing against a likelihood of confusion. Actual confusion evidence was also insignificant. The low descriptive nature and low distinctiveness of the “easy” element was also a factor in the court’s rejection of Easygroup’s argument that Easylife’s use of its “easy” names was detrimental to the distinctive character and repute of the Easygroup marks or took unfair advantage of them.
As is so often the case, Easygroup’s infringement claim provoked a counterclaim from Easylife in the form of a challenge to the validity of a number of Easygroup’s marks based on the grounds of non- use. Under the principle of “use it or lose it” a registered trade mark becomes liable to revocation if, following an initial grace period of five years, it is not put to genuine use or if at the time of the revocation action, it has not been genuinely used for five years. Use need not be quantitatively significant although it must be more than token (e.g. it must not be solely to preserve the validity); it must involve real commercial exploitation of the mark in the relevant market. As a result of this counter-attack the High Court ruled that Easygroup’s registrations for easyLand and easy4men should be revoked and that the scope of the easyJet and Easygroup trade marks should be cut down so that they no longer cover some goods and services which they had not in fact been used for.
- Many factors will influence the choice of a trade mark. However, this case provides a very practical illustration of the importance of avoiding descriptive, common English words where possible.
- Trade mark owners have a five year grace period immediately following registration in which the mark should remain valid even if it is not used. Businesses may take advantage of this by registering a broader specification of services initially so preserving the mark for use by the expanding business in new areas within this period. However, a trade mark which has not been put to genuine use in the market in this period may become liable to be revoked or cut down by competitors in relation to goods and services for which it has not been used (as happened in the Easygroup case). The strategy of re-filing trade marks after five years in order to obtain a second grace period has recently been the subject of negative judicial decision and may be ineffective. Businesses that wish to preserve use of their trade marks beyond the five year period for use in new directions should take advice on how this can be achieved.
Please contact our trade mark experts if you would like to discuss any issues relating to this case or to any other trade mark matters.
[i] High Court 29/07/2021