easyGroup Ltd -v- Nuclei Ltd (t/a Easy Offices) & Ors [2022] EWHC 901 (Ch)

13 April 2022

Jaani Riordan successfully appeared as junior counsel led by Mark Vanhegan QC for the defendants (collectively, “Nuclei”) in proceedings brought by the claimant (“easyGroup”) alleging infringement of four EU and UK trade marks for EASYOFFICE in various forms (“the Trade Marks”).  The Trade Marks were registered in relation to services including hire and rental of offices in Class 43.

Since 2000, Nuclei had been using the sign “EASYOFFICES” to operate a serviced office space brokerage business.  The proceedings marked the culmination of a dispute spanning close to 20 years, involving various invalidity, revocation and opposition actions before the UKIPO and EUIPO, appeals to the High Court, and defamation proceedings instituted against individual officers of the Regus Group, which acquired Nuclei in 2007.  In the present proceedings, Nuclei counterclaimed to invalidate the Trade Marks based on (i) Nuclei’s earlier goodwill in the sign EASYOFFICES, and (ii) bad faith, and sought revocation of all Trade Marks for non-use.  Nuclei also relied on defences of honest concurrent use, acquiescence, estoppel and laches.

Bacon J held that the Trade Marks were not infringed as there was no identity of marks or services, and likelihood of confusion (there having been no relevant instances of confusion in over 20 years despite ample opportunity for such evidence to come to light).  In any case, Nuclei was entitled to rely on a defence of honest concurrent use. Still further, the Trade Marks should, insofar as relied upon, be revoked for non-use.  However, Nuclei was not entitled to pursue its invalidity counterclaims over certain of the Trade Marks because they could and should have been raised in earlier invalidity proceedings in the UKIPO and EUIPO commenced in 2010.

The Judge therefore dismissed the claims for infringement, entered judgment on the counterclaim for revocation, and ordered easyGroup to pay 85% of the Defendants’ costs of the proceedings.

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