Chris Aikens

easyGroup Limited v Easy Live (Services) Limited & or [2023] EWCA Civ 1508

This was easyGroup’s appeal from decisions of Sir Anthony Mann in [2022] EWHC 3327 (Ch) . The judgment at first instance principally concerned easyGroup’s claims for trade mark infringement (which were largely unsuccessf...

This was easyGroup’s appeal from decisions of Sir Anthony Mann in [2022] EWHC 3327 (Ch) . The judgment at first instance principally concerned easyGroup’s claims for trade mark infringement (which were largely unsuccessful) and counterclaims for revocation of easyGroup’s trade marks (which were successful save for one category of service). The appeal concerned two less significant aspects of the outcome at first instance namely (1) the Judge’s dismissal of easyGroup’s claim for passing off against two of the Respondents’ (“ELA”) historical signs (Signs 2 and 3) for lack of damage, and (2) the grant of a declaration of non-infringement (“DNI”) in relation to Signs 1 and 4, the <easyliveauction.com> domain name and ELA’s use of the plain words EASY LIVE AUCTION (on which there was no finding on infringement). ELA defended the decisions of the Judge and, by way of a Respondents’ Notice, asked the Court of Appeal to uphold the dismissal of the passing off claim because the Judge was wrong to have found that there was an actionable misrepresentation.

The appeal was heard by Lewison, Arnold and Falk LJJ, with Arnold LJ giving the judgment of the court. The appeal was allowed on the passing off ground and partially allowed on the DNI ground.

In dismissing ELA’s arguments on misrepresentation, the Court held as follows:

A plea of an intention to create a link for the purposes of trade mark infringement under s. 10(3) of the Trade Marks Act 1994 is sufficient to allow a claimant to allege and rely on an intention to deceive for the purposes of a passing off claim.
The Judge’s finding that the Third Defendant was not dishonest was consistent with his finding that the Third Defendant had an intention to deceive.
A finding of misrepresentation is a finding of primary fact, with which the Court of Appeal is not entitled to interfere unless it was rationally insupportable

In allowing the appeal on the issue of damage, the Court held that a claimant which has an existing or prospective endorsement or licensing business can in principle rely upon the loss of a licence fee for the purpose of the damage element of the cause of action for passing off. It can do so without any evidence at all that any fee was in fact lost as a result of the defendant’s misrepresentation. This amounts to an irrebuttable presumption that the damage element is made out in claims brought by such claimants, for whom it is only therefore necessary to establish (1) goodwill and (2) a misrepresentation, in order to succeed.

On the DNI ground, the Court emphasised the importance of DNIs being precise. Notwithstanding the fact that the decision to grant, and the form of, the DNI was a matter for the discretion of the first instance judge, the Court of Appeal modified the DNI in respect of the plain words EASY LIVE AUCTION to limit it to forms used by ELA before the date of trial.

Chris Aikens appeared as sole counsel for ELA.

[2023] EWCA Civ 1508

TVIS Ltd V Howserv Services Ltd [2023] EWHC 2589 (Ch)

This was a claim for trade mark infringement, passing off and invalidity of the Defendant’s trade mark brought under the Shorter Trials Scheme. The Claimant and the Defendants are both providers of pet insurance. The C...

easyGroup Limited v Easy Live (Services) Limited & or [2022] EWHC 3327 (Ch)

This case is the latest chapter in the series of trade mark infringement and passing off cases that easyGroup has brought in recent years against various parties who trade under names including the word “easy”. These Def...

This case is the latest chapter in the series of trade mark infringement and passing off cases that easyGroup has brought in recent years against various parties who trade under names including the word “easy”. These Defendants had been operating an online auction bidding platform and providing back-office software for use in the auctioneering trade in the UK under the name Easy Live Auction since 2010.

easyGroup claimed infringement of five registered trade marks: easyJet, easyGroup, easyMoney, easyProperty and Easy Networks. It was alleged that there was a likelihood of confusion between each of those marks and the four signs used by the Defendants in relation to advertising, information, payment and platform services. The four signs were different stylisations of the name Easy Live Auction used at various dates and were each presented as white text on blue background. It was also alleged that the use of those signs took unfair advantage of and caused detriment to the distinctive character and repute of the Claimant’s trade marks. easyGroup further claimed passing off. The Defendants denied the claims and counterclaimed for revocation of four of the marks for non-use in relation to several categories of services included in the specifications of easyGroup’s marks.

Following a trial before Sir Anthony Mann, the counterclaim for revocation succeeded, save for one category of service in the specification of one of the Claimant’s marks. As a result, the scope of the infringement claim was significantly reduced. The Judge dismissed the infringement claim based on likelihood of confusion, due to a lack of similarity between the services, and dismissed the claim for passing off, for lack of damage. The infringement claim under s. 10(3) of the Act succeeded in relation to three of the Defendants’ signs, use of which had ceased by the time proceedings had been commenced, based on unfair advantage.

The case raises interesting points of law in relation to the application of the Brexit provisions of the Trade Marks Act to non-use counterclaims, the impact of the limitation period on the date of assessment of trade mark infringement claims and the conditions for relying on a ‘family of marks’ in support of a case on likelihood of confusion.

In a separate reserved judgment, the Court held that easyGroup should pay 35% of the Defendants’ costs.

Chris Aikens appeared as sole counsel for the Defendants

[2022] EWHC 3327 (Ch)

[2023] EWHC 240 (Ch) (Costs)

S3D v Oovee [2022] EWCA Civ 1665

This was an appeal in an arbitration claim. The appellant and respondent were parties to an arbitration conducted under LCIA Rules, where Oovee’s principal claim was for unpaid royalties under a licence agreement relatin...

ABP Technology v Voyetra Turtle Beach [2022] EWCA Civ 594

This was an appeal of a case management decision to allow certain amendments to a statement of case in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The C...

Original Beauty Technology Company Ltd & ors v G4K Fashion Ltd & ors [2021] EWHC 3439 (Ch)

This was the damages inquiry in an unregistered design case involving two fashion brands: House of CB (the Claimants) and Oh Polly (the Defendants). A liability trial was heard towards the end of 2020: see [2021] EWHC 2...

This was the damages inquiry in an unregistered design case involving two fashion brands: House of CB (the Claimants) and Oh Polly (the Defendants). A liability trial was heard towards the end of 2020: see [2021] EWHC 294 (Ch).

Oh Polly had sold 15,393 garments which infringed House of CB’s unregistered UK and/or Community design rights. House of CB claimed “standard damages” on two bases: (i) lost profits where Oh Polly’s sales had substituted for sales which would have been made by House of CB; and (ii) “user principle” damages where sales substitution had not taken place. Oh Polly accepted that it was liable to pay “user principle” damages, but not damages for lost profit. House of CB sought c. £275,000 in standard damages, while Oh Polly maintained that only c. £15,000 was due.

The liability trial had determined that House of CB was entitled to additional damages pursuant to §229(2) of the Copyright, Designs and Patents Act 1988. House of CB sought a “top up” award of additional damages to take the total to c. £500,000. Oh Polly’s position was that additional damages should be calculated as an “uplift” on standard damages of 20% (on Oh Polly’s case coming to c. £3,000).

The Court held that House of CB was entitled to standard damages under both heads claimed. It determinexd that 20% of Oh Polly’s infringing sales would have been made by House of CB had the infringing garments not been available, and awarded damages for lost profit accordingly; on the remainder of sales a reasonable royalty was awarded of 10% of Oh Polly’s net sales with a guaranteed minimum royalty of £4,000 per design. Standard damages totalled c. £150,000.

In relation to additional damages, the Court determined that an award of £300,000 was appropriate, having regard to the scale of the infringement and its flagrancy, and the need to punish and deter the Defendants from further infringements. This represents the largest reported UK award of additional damages in a design right (or copyright) case.

Thus total damages of c. £450,000 were awarded to House of CB.

Anna Edwards-Stuart and David Ivison appeared for House of CB. Chris Aikens appeared as sole counsel for Oh Polly.

[2021] EWHC 3439 (Ch)

easyGroup Limited v Easylife Limited & or [2021] EWHC 2150 (Ch)

easyGroup is the owner of the easyJet trade mark and a large number of other trade mark registrations containing the word ‘easy’. It regularly brings trade mark infringement and passing off claims against parties who tr...

easyGroup is the owner of the easyJet trade mark and a large number of other trade mark registrations containing the word ‘easy’. It regularly brings trade mark infringement and passing off claims against parties who trade under names including the word ‘easy’, in some cases having done so for many years without any complaint. This case was a paradigm example: the Defendants had been operating a catalogue and online retail business in the UK since 2000 under the name ‘easylife’, and from 2004 the online business had been operated from the domain easylifegroup.com.

easyGroup claimed infringement of four registered trade marks: easyJet, easyGroup, easyLand and easy4men. It was alleged that there was a likelihood of confusion between each of those marks and the signs ‘easylife group’, ‘easylifegroup.com’ and three other signs used by the Defendants in relation to cleaning products. It was also alleged that the use of those signs took unfair advantage of and caused detriment to the distinctive character and repute of the easyJet and easyGroup marks. easyGroup further claimed passing off. The Defendants denied infringement and passing off, and relied on the defences of honest concurrent use and use of the First Defendant’s own name. They counterclaimed for revocation of all of easyGroup’s marks for non-use.

Chief ICC Judge Briggs found for the Defendants on all issues. The court partially revoked the easyJet and easyGroup marks (the latter having been conceded by easyGroup in closing submissions), and revoked the easyLand and easy4men marks in relation to all of the goods and services relied on. The infringement and passing off claims were all dismissed. Crucial to the court’s reasoning was that the word “easy” is a descriptive word and is therefore not distinctive.

The case was also notable for the fact that the Defendants called five consumer witnesses who gave evidence that they had not been confused in spite of having referred to the Defendants in an email or customer review as ‘easygroup’ or ‘easy group’.

Chris Aikens appeared as sole counsel for the successful Defendants.

[2021] EWHC 2150 (Ch)

Original Beauty Technology & ors v Oh Polly & ors [2021] EWHC 294 (Ch)

This was a dispute between two fashion brands: House of CB and Oh Polly. Both sides sell bodycon and bandage dresses and other garments, styles made famous by celebrities including Kim Kardashian and Jennifer Lopez, eit...

This was a dispute between two fashion brands: House of CB and Oh Polly. Both sides sell bodycon and bandage dresses and other garments, styles made famous by celebrities including Kim Kardashian and Jennifer Lopez, either primarily or exclusively online. House of CB claimed that Oh Polly copied 91 of their garment designs, thereby infringing their unregistered design rights under UK and EU law. There was also a claim for passing off: House of CB claimed that Oh Polly had copied their business model, social media, marketing, packaging and presentation (including using the same models and the same locations for photoshoots) such that consumers would be deceived into thinking that Oh Polly was a sister brand of House of CB.

Proceedings were streamlined such that at this trial, the Court was asked to determine the claims for unregistered design right infringement in respect of 20 out of the 91 garments in issue, in addition to the claim for passing off. The trial took place remotely over seven days. Following closing submissions, an in-person physical inspection of the garments was held at Oh Polly’s solicitors’ offices at which the parties’ counsel had the opportunity to point out similarities and differences to the judge.

Mr David Stone (sitting as a Deputy High Court Judge) held that Oh Polly had infringed unregistered design rights in seven out of the 20 garments in issue and that House of CB were entitled to additional damages as a result of the flagrancy of that infringement. The unregistered design right infringement claims in relation to the remaining 13 garments were dismissed. The claim for passing off was also dismissed, the judge having held that although House of CB had proved its case in relation to goodwill in some of the pleaded indicia, they had not established on the evidence that sufficient members of the relevant public had been deceived into thinking that Oh Polly was a sister brand of House of CB.

Anna Edwards-Stuart and David Ivison appeared for House of CB. Chris Aikens appeared as sole counsel for Oh Polly.

[2021] EWHC 294 (Ch)

Performing Right Society Limited v Qatar Airways Group Q.C.S.C. [2020] EWHC 1872 (Ch)

This was an application by Qatar Airways (QA), to stay a claim of worldwide infringement of copyright, on grounds of forum non conveniens. PRS, a UK collecting society, is the assignee of the performing rights in the mu...

Adolf Nissen Elektrobau GmbH & Co KG v Horizont Group GmbH [2019] EWHC 3522 (IPEC)

This was a claim for revocation of a patent for a mobile warning device for road traffic, consisting of a board to be mounted on a vehicle having an arrangement of lights. The only ground of invalidity was obviousness o...

Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC)

Prosyscor claimed to be entitled to an international patent application and national and regional applications derived from it. The invention claimed was a method of discriminating between requests to access a website s...

Rotam Agrochemical Company Ltd & Anor v GAT Microencapsulation GMBH [2018] EWHC 2765

This trial in the Commercial Court concerned an attempted collaboration in relation to the production of a capsule suspension formulation for Clomazone, a plant protection product. Rotam alleged that GAT had breached tw...

Bose Corporation v Freebit AS [2018] EWHC 889 (Pat)

In this action Bose’s in-ear headphones and StayHear eartips were alleged to infringe a patent owned by Freebit. The patent is for an ear unit with a shape allowing it to fit comfortably and stably in the outer ear. Bo...

W3 Ltd v Easygroup Ltd & Anor [2018] EWHC 7 (Ch)

This was a complex trade mark dispute, the core of which was whether W3 Ltd had infringed any valid EU trade mark of easyGroup Ltd by use of the sign “EasyRoommate” as the name of an online flat-sharing service. The cas...

Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch)

This was a claim for misuse of confidential information relating to the manufacturing techniques and recipe used to make edible infused oils such as basil oil. The court held that in developing their own process for man...

PMS International Group Plc v Magmatic Limited [2016] UKSC 12

This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the...

This is the first Community Registered Design case to reach the Supreme Court, and in it the Court has made a landmark decision as to the proper interpretation of Community Registered Designs. In this case, Magmatic, the maker of the Trunki ride-on suitcase for children brought a claim against PMS for infringement of its Community Registered Design against PMS, the seller of the Kiddee Case, which is also a ride-on suitcase for children. In July 2013, Arnold J interpreted the Community Registered Design was for shape of a suitcase alone and held that it had been infringed by the Kiddee Case.

The Court of Appeal allowed PMS’s appeal, holding that the judge had made a number of errors in interpreting the Community Registered Design. Having carried out its own comparison of the respective overall impressions created on the informed user, the Court found that the Kiddee Case did not infringe the Community Registered Design.

Magmatic appealed to the Supreme Court, arguing that the Court of Appeal’s interference with the decision of Arnold J was misplaced and requesting the restoration of the original finding of infringement. In the alternative, Magmatic contended that the case involved points of EU law which should be referred to the CJEU. The request for a reference was supported by the Comptroller General of Patents, Designs and Trademarks who was given permission to intervene.

The Supreme Court dismissed the appeal and declined to make a reference to the CJEU. The Court of Appeal’s reconsideration was justified. In the leading judgment given by Lord Neuberger, the Court held that the overall impression created by the Community Registered Design is that of a horned animal and this was reinforced by the absence of decoration on the surfaces of the suitcase. Moreover, Arnold J had erred in failing to take into account the contrast in tone between its different parts. The Court of Appeal’s finding of infringement therefore stood. In addition whilst expressly stating that its decision on this aspect was obiter the Court expressed the very strong view that absence of decoration may as a matter of principle be a feature of a registered design and that feature may be depicted on a CAD image. Having decided the matter in this way, the Supreme Court considered that the appeal did not raise any issue which should be referred to the CJEU.

Mark Vanhegan QC and Chris Aikens appeared for PMS. Brian Nicholson appeared for the Comptroller General of Patents, Designs and Trademarks.

[2016] UKSC 12

Design & Display Ltd v Ooo Abbott & Anor [2016] EWCA Civ 95

This was an appeal of a decision in an account of profits following a successful claim for infringement of a patent for a display panel used in shops made up of ’slatted panel’ and ’snap-in' aluminium inserts. At the ac...

Bailey v Graham (AKA Levi Roots) [2012] EWCA Civ 1469

Mark Vanhegan QC and Chris Aikens successfully represented chef and entrepreneur Levi Roots in a claim brought against him and his companies for breach of contract and misuse of confidential information relating to the e...