Facts

EasyGroup Ltd issued trade mark infringement and passing off proceedings against Easyway Sbh based on four UK registered trade marks owned by EasyGroup for EASYJET, EASYCAR, EASYBUS and EASYHOTEL. EasyGroup claimed infringement under both s 10(2)(b) and s 10(3) of the Trade Marks Act 1994.

Easyway, which was incorporated in 2007 in St Barthelemy, provides an airport “meet and greet” service for visitors to the island. It also books flights and offers accompanying car or boat travel and occasionally villa rental in St Barts via its website at easyway-sbh.com. It used the word signs “easyway” and “easyway Sbh”, as well as the following logo:

Decision

Section 10(2)(b)

Similarity of marks

Recorder Douglas Campbell QC found that there were obvious visual, aural and conceptual similarities between EASYJET and “easyway”. Although the word “easy” was an ordinary English word and therefore not of itself distinctive, which pointed against a likelihood of confusion, in both EASYJET and “easyway” it was integrated into a longer word by combining it with another ordinary English word. The result was a single word, constructed in a similar way (EASY- plus something alluding to travel) and had the same number of letters and syllables.

Further, the addition of “sbh”, which is the airport code for St Barts, to the “easyway” sign did not make much of a difference, as many consumers would think it was just a corporate abbreviation of some sort, while others would see it as merely reinforcing the idea of a travel brand.

As for Easyway’s logo, this had a degree of stylisation in it, but the colour was irrelevant since EasyGroup’s mark were valid in all colours. Further, the globe and airplane in the logo had little distinctive character for a travel-related business based on airport “meet and greet” services, and the words “VIP Services” were small and descriptive in nature; the main part of the sign was still the word “easyway”.

Overall, Recorder Campbell found that there was at least a medium degree of similarity between the EASYJET mark and the signs. Similar reasoning applied to the other marks. The point about the same number of letters and syllables did not apply to EASYHOTEL, but even in that case, he did not think that there was only low similarity, as argued by Easyway.

Similarity of services

Recorder Campbell found that there was a high degree of similarity in the key comparisons. Although Easyway’s “meet and greet” services were not identical to any services for which EASYJET was registered (with the possible exception of “travel agency and tourist services”) they were still complementary to the EASYJET services and had a high degree of similarity to them. Further, Easyway’s car rental services were identical to those for which EASYCAR was registered and its accommodation booking services were identical to those for which EASYHOTEL was registered. As for Easyway’s boat rentals, Recorder Campbell said that Easyway offered them on a similar basis to its air charter flights, car rentals and villa rentals and that they were essentially add-ons to the same basic business offered from time to time. Therefore, they had a medium degree of similarity with the transportation services for which EASYJET was registered.

Likelihood of confusion

Only two examples of actual confusion were put before the court which Recorder Campbell considered were of little assistance. However, this was not a case where he could draw any inference from the lack of evidence of confusion.

Recorder Campbell concluded that there was a likelihood of confusion in relation to each type of use made by Easyway in relation to each mark because:

1. Easygroup’s marks were word marks that were not restricted to any colour or font;
2. the marks were not restricted to low-cost services (as argued by Easyway, whose services are high-end services);
3. there was at least a medium degree of similarity;
4. although Easyway’s services were not all identical to those for which the marks were registered there was, on the whole, a high degree of similarity and in other cases it was still medium;
5. the evidence showed that Easygroup’s marks benefitted from an enhanced reputation through use in relation to some of the services;
6. EasyGroup could rely on the concept of a “family of marks” (see W3 v Easygroup Ltd [2018] EWHC 7 (Ch)), since its marks all shared the common word EASY, all members of the family related to travel services, and many of the services were marketed as a ‘family’ via the EasyGroup’s website at easyjet.com; given that Easyway’s business was also travel-related; and
7. Easyway’s website “targeted” the UK; therefore, its use of the “easyway” signs on the site, which was ostensibly outside the UK, gave rise to liability within the UK (which is in contrast to the court’s finding in the earlier case Easygroup Ltd v Easy Fly Express Ltd & Anor. [2018] EWHC 3155 (Ch), for example); this was so notwithstanding the fact that it was also targeted at the US because:
   1. the services were international in nature, in the sense that Easyway offered services to international tourists;
   2. on the evidence, the website generated substantial numbers of sales enquiries from UK customers with which Easyway actively engaged;
   3. the only objective difference on the website between the UK and USA was the presence of a single line stating “(From USA please toll 011+ number)”, otherwise, Easyway’s approach to the US market was the same as its approach to the UK market.

Section 10(3)

Easygroup relied solely on EASYJET for this part of the claim. Recorder Campbell found that the mark had a reputation at the relevant time in the UK due to enhanced distinctiveness through use. The finding of a likelihood of confusion under s 10(2) led to findings of their being a link between Easyway’s sign and EASYJET, and dilution of the mark, for similar reasons.

Recorder Campbell rejected any suggestion of damage due to tarnishing or free-riding. Free-riding was unlikely given that Easyway did not want to provide a low-cost service, and the theory that Easyway had got the idea for their name from seeing an easyCruise ship docking in St Barts was not proven.

Finally, there was no due cause for Easyway’s use. Accordingly, Recorder Campbell found infringement under s 10(3).

Defences

Easyway’s s 11(2) defence failed as it was not using “Easyway” in a descriptive sense but to indicate trade origin of its services.

Easyway also pleaded honest concurrent use, saying that it did not use the signs in the UK at all and, alternatively, if it had made any such use, it had been on such an extensive scale and for such a long period that it was entitled to the defence.

Recorder Campbell found that, by 19 June 2013, the parties had co-existed for only a few years and Easyway’s UK business under its signs, whilst non-trivial, had been small in extent whereas that of Easygroup under its marks had been very extensive. Therefore, the defence failed.

Accordingly, Easyway was found liable for infringement under both ss 10(2)(b) and 10(3).

Passing off

Recorder Campbell found that the use of the word signs “easyway” and “easyway sbh” constituted passing off, largely for the same reasons as for s 10(2)(b) infringement. Notwithstanding the difference in the parties’ respective businesses, the use of these signs was still likely to lead the public to believe that the services offered thereunder were those of Easygroup, which would damage Easygroup’s goodwill.

However, Easyway’s use of its logo in the context of its business did not amount to passing off, mainly because of the use of green and blue colours rather than orange and white. Recorder Campbell did not think that the public would be led to believe that the services offered thereunder were those of or connected with Easygroup. (Easygroup Ltd v Easyway Sbh [2021] EWHC 2007 (IPEC) (22 July 2021) — to read the judgment in full, click here).