easyGroup Limited v Nuclei Limited & or [2023] EWCA Civ 1247
This was an appeal from the decision of Bacon J in [2022] EWHC 901 (Ch) dismissing easyGroup’s claim for infringement of its mark EASYOFFICE under s.10(1) and (2) of the Trade Marks Act 1994 against Nuclei’s use (since 2000) of the sign EASYOFFICES. This appeal was the culmination of an acrimonious and factually complex 23-year-old dispute between easyGroup and Nuclei over the right to use the signs EASYOFFICE / EASYOFFICES in relation to the provision and brokerage of serviced office space.
The appeal was heard by Lord Justices Arnold and Nugee and Sir Christopher Floyd on 10-11 October 2023. In upholding the trial Judge’s findings on infringement and revocation for non-use, Lord Justice Arnold’s judgment addressed several interesting points of trade mark law:
- The Court emphasised the fact that use of a sign in (website) advertising for a third party’s services could be held to be use in relation to those services. The relevant question is whether the average consumer would perceive the sign as a badge of origin in relation to those services.
- Despite not expressly departing from any of the established authorities on the matter, the Court adopted a very strict approach to the concept of identity in holding that the signs EASYOFFICE and EASYOFFICES are not identical.
- The Court reiterated the principle expressed in Muzmatch that absence of instances of actual confusion becomes more relevant the longer the parties have used their signs in parallel.
- The case also includes a careful consideration of honest concurrent use as a factor to be relied on for the purposes of likelihood of confusion, as well as a useful summary of the relevant principles of a claim for revocation for non-use.
- In upholding the trial Judge’s decision on revocation, the Court confirmed that there is no de minimis threshold for genuine use. The Court also reiterated the fact that, although advertising may undoubtedly constitute use of a trade mark, it will rarely be sufficient on its own to constitute genuine use. This is particularly so where the advertising consists solely of a website, even if it is targeted at the relevant territory.
Mark Vanhegan KC appeared for the Defendants, instructed by Mishcon de Reya LLP.