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 case involved a large number of issues principally arising out a long period of concurrent trading by the parties, including on the date of assessment of an infringement claim, acquiescence, validity, revocation and chain of title to goodwill. The Court held that easyGroup’s trade mark for the word EASY is and always was invalidly registered in relation to ‘advertising’ and ’temporary accommodation’ services because EASY was descriptive of those services and had not acquired distinctiveness through use of that mark or any other mark containing “easy”. As for the eight other EU trade marks relied on by easyGroup, the Court held that none of them had been infringed on either of the two pleaded bases. There was no likelihood of confusion with “EasyRoommate” in any of the forms in which that sign had been used and those of easyGroup’s EU trade marks which had been shown to have a reputation at the relevant dates (easyJet and easyHotel) had not suffered any of the actionable injuries (unfair advantage or detriment to distinctive character or repute). easyGroup’s claim for passing off also failed.
Had it been necessary to do so, the Court would have dismissed W3’s defence of statutory acquiescence inter alia because easyGroup’s letters before action had been sufficient to stop time running for the purposes of acquiescence, although the court considered that this was a point of law that needed to be determined by the CJEU. W3’s statutory claim for groundless threats of proceedings for trade mark infringement was also dismissed on the ground that easyGroup’s threats had been only in relation to the supply of services.
Mark Vanhegan QC and Chris Aikens successfully represented W3.