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 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.