Facts

easyGroup Ltd is a holding company established in 2000 to be the owner of all IP rights in and to the various “easy” businesses founded by Sir Stelios Haji-Ioannou, such as easyJet and easyCar.

In 2019, easyGroup issued proceedings against four companies within the IWG Plc group: (i) Nuclei Ltd; (ii) Pathway IP Sarl; (iii) Regus Group Ltd; and (iv) IWG Plc itself (the Defendants), for infringement of easyGroup’s registered marks for EASYOFFICE, as follows:

1. a UK word and figurative mark for EASYOFFICE, easyOffice and the logo (Fig 1) filed on 18 October 2002 in Class 43 covering “hire of temporary office space; rental of meeting rooms; …” (the UK Mark);
2. an EU word mark for EASYOFFICE filed on 18 October 2002 in Class 36 covering “rental of offices, letting of office space; …” and Class 43 covering “hire of temporary office space; …” (the EU Word Mark); and
3. an EU figurative mark for a logo (Fig 2) filed on 4 March 2013 in Class 35 covering “advertising; business management; …”, Class 36 covering “… rental of office space; …” and Class 43 covering “temporary accommodation; rental of meeting rooms; …” (the EU Figurative Mark) (together, the Marks)

easyGroup claimed that the Defendants had infringed the Marks through its use of “Easyoffice” and “Easyoffices” in both word form and various logo forms in relation to the rental of serviced offices (the Signs). The Defendants counterclaimed for a declaration that the Marks were invalidly registered as a result of their prior reputation and goodwill in the UK and on the basis of bad faith. In the alternative, Nuclei sought revocation of the Marks for non-use.

Nuclei was incorporated in November 1999 to act as an online broker for the rental of serviced offices. Marketing began in around May 2000. Nuclei was acquired by Regus in 2007.

Since the launch of easyJet in 1995, Sir Stelios has used the same “easy” branding in relation to various businesses, e.g., easyCar. The branding consists of: (i) the Cooper Black Font; (ii) lowercase “easy” plus a capitalised second word; and (iii) white lettering on a Pantone 021c orange background.

In autumn 2002, the idea for an “easyOffice” business was included in a list of ten possible business ventures in an easyGroup internal presentation document. However, easyGroup did not take concrete steps to launch the easyOffice business until 2006.

Decision

Res judicata

easyGroup said that, as a result of earlier invalidity and revocation proceedings brought (1) by Nuclei at the IPO in 2007 (in relation to the UK Mark) and (2) by Pathway at both the IPO and the EUIPO in 2010 (in relation to the UK Mark and the EU Word Mark), Nuclei was barred from challenging the validity of them on cause of action estoppel or, alternatively, abuse of process. In easyGroup’s view, only the invalidity claim in relation to the EU Figurative Mark could proceed.

The 2007 proceedings

Bacon J noted that the 2007 actions did not result in a final decision by the UK IPO, as required by the doctrine of res judicata, since they (and the revocation actions filed at the same time) were withdrawn with the consent of the parties. The question was therefore whether the circumstances of the withdrawal were such that it could be said that there was nevertheless a “decision” sufficient to engage the principles of res judicata.

The evidence showed that the proceedings were withdrawn pursuant to a “compromise without an order”, of the type which Spencer, Bower and Handley: Res Judicata characterises as not being a decision. That construction was supported by rule 69(1) of the Trade Mark Rules 2008, which requires a “decision” to be accompanied by written reasons. Letters from the UKIPO confirming withdrawal did not contain written reasons.

easyGroup argued that pursuant to Ako v Rothschild Asset Management [2002] EWCA Civ 236, because it had fully intended to abandon the claim, Nuclei was barred from challenging validity. There was no evidence of any such intent, so easyGroup argued that the court should infer it from: (i) the absence of a clear reservation of rights by Nuclei; (ii) the fact that the parties had agreed that there should be no order for costs; and (iii) the fact that the 2010 invalidity claims had been based on different, earlier EASYOFFICE marks (subsequently revoked), owned by Pathway, a different IWG company.

Bacon J held that (i) and (ii) were entirely neutral. As for (iii), it could reasonably be inferred that the Defendants had preferred an invalidity claim based on different marks to a claim based on Nuclei’s prior rights and/or the bad faith argument. However, that said nothing about whether the Defendants intended to abandon for all future purposes any claim based on the arguments in the 2007 action.

There was, therefore, no cause of action estoppel. Nor, for the same reasons, was it an abuse of process for the Defendants to renew the arguments in these proceedings.

The 2010 proceedings

In these proceedings, given that the marks upon which Pathway had relied were subsequently revoked, both the IPO and the EUIPO had ceased the proceedings.

In respect of Pathway’s action against the UK Mark, the parties agreed that Bacon J did not need to decide the cause of action estoppel arguments, given easyGroup’s alternative case based on abuse of process and the authority that estoppel is “essentially concerned with preventing abuse of process” (Arnold v National Westminster Bank [1991] 2 AC 93).

The question was whether the current grounds of invalidity could and should have been included in the 2010 invalidity actions. There was no dispute that both the bad faith and prior goodwill grounds could have been advanced, and Bacon J found that they also should have been included in the 2010 actions.

Bacon J also dismissed the Defendants’ argument that because easyGroup had not identified any prejudice to it in the Defendants pursuing the invalidity challenges, there was no abuse of process. Bacon J said that the prejudice to easyGroup lay in being “vexed” a second time, i.e., having defended itself once already, it was entitled to rely on the finality of the proceedings. Bacon J also found that there was sufficient privity among the Defendants such that they were all constrained.

Accordingly, the Defendants were barred from relying on the same arguments on invalidity of the UK Mark as withdrawn in 2007 and then not raised in 2010.

As for the EU Word Mark, easyGroup argued that the Defendants were barred from challenging the same Mark in these proceedings under Article 60(4) of the Trade Mark Regulation (2017/1001/EU). As a fallback, if that Article was not engaged, easyGroup relied on abuse of process.

Bacon J found that Article 60(4) addresses the situation where the proprietor of rights has previously sought a declaration of invalidity and the same party subsequently makes a new application or counterclaims for a declaration of invalidity on grounds that could have been involved in support of the first action. Therefore, while Pathway was constrained, the other Defendants were not.

As for abuse of process, Bacon J said that the same analysis as for the UK Mark applied: Pathway could and should have included the current grounds of invalidity in the proceedings.

Overall, therefore, the Defendants were barred on the grounds of abuse of process.

Invalidity of EU Figurative Mark on grounds of Nuclei’s prior rights

Given Bacon J’s findings on res judicata, only the validity of the EU Figurative Mark under Article 60(1)(c) of the 2017 Regulation was in issue.

Bacon J held that the date on which goodwill had to be assessed was the filing date of the EU Figurative Mark, i.e., March 2013, by which time there was no doubt that Nuclei had acquired goodwill through its use of the Signs.

Bacon J noted that the EU Figurative Mark was registered in a specific figurative form, which was the same as the figurative element of the UK Mark that had been in use since 2007. By 2007, Nuclei had used a succession of very different logos. Any person seeing the EU Figurative Mark would have been more likely to associate it with the “easy” businesses, including the easyOffice business, than Nuclei’s Easy Offices business. Accordingly, there was no deception that would damage Nuclei’s goodwill or divert trade from it. The invalidity claim failed.

Invalidity of EU Figurative Mark based on bad faith

Bacon J found that although part of easyGroup’s intention in applying to register the EU Figurative Mark in 2013 might have been to obtain an advantage in its ongoing disputes with the Defendants, that was not its sole intention and there was a coherent commercial logic to the application: by March 2013, easyOffice had been trading for almost six years and while its trade had significantly diminished by that time, bookings continued to be taken. There was therefore no lack of intent to use the EU Figurative Mark such as to indicate bad faith. The invalidity claim failed.

Revocation for non-use

Bacon J rejected easyGroup’s limited evidence of genuine use in respect of rental of offices, saying that it did not show “real commercial exploitation” during the five years before commencement of these proceedings. Accordingly, she held that all three Marks should be revoked for non-use in relation to the rental of offices.

Infringement and honest concurrent use

easyGroup alleged infringement under ss 10(1) and 10(2) of the 1994 Act and Article 9(2)(a) of the 2017 Regulation. Bacon J found that, in respect of s 10(1), since the services were not identical (Nuclei did not itself hire or rent office space but acted as an online broker instead) the claim under this head failed.

As for s 10(2), Bacon J said that there was no doubt that since the relevant date, the Defendants had used the Signs in the course of trade, and they were similar to the Marks. Likewise, their services were similar to the specifications of the Marks.

As for likelihood of confusion, there was no evidence of actual confusion, which in Bacon J’s view, given that there had been ample opportunity for any evidence of confusion to have emerged, was a material factor suggesting that confusion was not likely.

In Bacon J’s view, however, there was a strong case of honest concurrent use by Nuclei. Nuclei had adopted the “Easy Offices” name several years before easyGroup had applied for the Marks, and long before the easyOffice business was launched. Further, the Defendants had agreed not to use an orange and white livery (or any “confusingly similar” livery), and the Signs moved well away from the design elements that characterised the “easy” company brands. There was no evidence of confusion over several years when the word Signs were used alongside the Marks, and there was no evidence suggesting that the Defendants’ use of the Signs had taken unfair advantage of or had been detrimental to the character or reputation of the Marks.

Overall, in respect of the figurative element of the UK Mark and the EU figurative Mark, given that the logos were very different and there was no evidence of confusion and no likelihood of confusion, there was no infringement. As for the EU Word Mark, the position was more finely balanced, but overall, Bacon J found that despite the similarity of both the EU Word Mark/Signs and the services offered, the absence of any evidence of confusion in over five years of side-by-side use indicated that confusion was not likely. To the extent that there was confusion, it was such as should be tolerated given the honest concurrent use by the Defendants. Accordingly, there was no infringement. (easyGroup Ltd v Nuclei Ltd [2022] EWHC 901 (Ch) (13 April 2022) — to read the judgment in full, click here).