Jaani Riordan appeared for the successful Respondents (“Nuclei”) in an appeal brought by easyGroup Ltd (“easyGroup”) against a decision of Bacon J dismissing its claims for infringement of four trade marks for “easyOffice” and related devices (“the Marks”) and revoking all four Marks for non-use.
easyGroup alleged infringement under ss 10(1) and 10(2) of the Trade Marks Act 1994 (“TMA”) and under Articles 9(2)(a) and 9(2)(b) of the EU Trade Mark Regulation (“EUTMR”), by Nuclei’s use of signs comprising ‘EASYOFFICES’. easyGroup contended that the Marks had been put to genuine use on a single floor of a single building in Croydon, and as part of a “white label” partner arrangement with an online office space directory called Instant Offices.
Nuclei’s business was established in early 2000 and it had been trading under the sign EASYOFFICES in various forms continuously since then. It was common ground that easyGroup knew of Nuclei’s trade since early 2001 but had taken no step to restrain its use of the EASYOFFICES sign until May 2019. Nuclei is owned by the IWG/Regus Group.
On appeal, easyGroup contended that the Judge had made a number of errors of principle in her assessment of double identity infringement, including by failing to treat ‘EASYOFFICES’ as a sign which was identical to ‘EASYOFFICE’ and by failing to construe the specifications of the Marks correctly. easyGroup also contended that the Judge had failed to conduct a proper assessment of the likelihood of confusion and had been wrong to find honest concurrent use.
The Court of Appeal dismissed the appeal in an ex tempore decision indicated on the second day of the appeal. As a result, it was unnecessary to consider Nuclei’s Respondents’ Notice.
In its written judgment subsequently handed down on 27 October 2023, the Court of Appeal (Arnold and Nugee LJJ and Sir Christopher Floyd) unanimously held that the Judge’s conclusions on infringement were correct:
- Under s 10(1) TMA / Art 9(2)(a) EUTMR, the test was whether the mark and the sign were identical. This did not involve asking whether the signs were confusingly similar, but whether any differences would go unnoticed by the average consumer. Here the Marks were different from the sign and there was no infringement under s 10(1), despite there being some identity of services.
- Under s 10(2) TMA / Art 9(2)(b) EUTMR, the trial judge was entitled to conclude that there was no likelihood of confusion. This involved a multifactorial assessment as to the likelihood of confusion and there was no basis for interfering in the Judge’s assessment or the weight she ascribed the lack of any evidence of actual confusion. Although the Court of Appeal disagreed in some respects with the Judge’s approach to identity of services, this would not have made a difference to the analysis of confusion.
- The Judge made no error of principle when assessing whether the Marks had been put to genuine used. In particular, the Judge did not impose a de minimis threshold and had the correct principles well in mind. She was right to take account of the fact that easyGroup was an experienced undertaking which knew what was needed to prove genuine use during the relevant period, and that it had failed to do so to the required the standard of proof.
Accordingly, the Court of Appeal dismissed the appeal and ordered easyGroup to pay the costs of the appeal together with an interim payment on account.