Background

The Appellant, easyGroup Ltd (‘easyGroup’), owned various trade mark registrations for the following marks in the UK and EU for the below services:

Mark	Services
EASYOFFICE   easyOffice	Hire of temporary office space (Class 43)
EASYOFFICE	Rental of offices (Class 36); hire of temporary office space (Class 43)
	Office management services; provision of services offices (Class 35); rental of office space (Class 36); hire of temporary office space (Class 43)

Since 2000, the respondents, Nuclei Limited (‘Nuclei’) and other, had brokered serviced office spaces under a brand called “EASY OFFICES.”

easyGroup brought a claim against Nuclei for trade mark infringement in accordance with section 10(1) of the Trade Marks Act 1994 (‘TMA’) (identical mark for identical goods/services), and section 10(2) of TMA (likelihood of confusion) for using “EASY OFFICES”. Nuclei then counterclaimed to revoke easyGroup’s above-mentioned trade marks for non-use under s 46(1)(a) and 46(1)(b) of TMA.

Decision

easyGroup lost the first instance decision. easyGroup appealed to the Court of Appeal (‘COA’), arguing that the marks are identical and there is a likelihood of confusion. In regard to s 10(1) of the TMA, the COA concluded that the marks were not identical as it looked to see whether the difference (only the additional letter S at the end of the mark) would go unnoticed by the average consumer. It stated that the additional letter S at the end of EASYOFFICES provides noticeable visual and aural differences. Further, the marks were conceptually different from singular to plural. Although the services were considered to be identical by the COA, this alone was not sufficient for a successful infringement claim.

The COA assessed the identity of the services in three stages. The first stage involved interpreting the specification as applied-for to determine identity of services. The second stage was ascertaining the precise nature of Nuclei’s offering. Thirdly, the COA considered whether Nuclei used the sign EASYOFFICES “in relation to” a service of “hire of temporary office space”. The COA confirmed that a brokerage service did not constitute “hire of temporary office space”, but Nuclei used their sign "in relation to" a hire service through their website advertising, leading the average consumer – seeking office space to hire, to perceive the sign EASYOFFICES as a badge of origin in relation to the office space advertised for hire. Consumers would perceive EASYOFFICES as having some responsibility for the quality of the office services provided by the supplier, even if they appreciated that the supplier was primarily responsible.

With respect to likelihood of confusion, easyGroup claimed that the trial judge had failed to conduct a proper assessment as to the likelihood of confusion between the marks. However, as the judge based the assessment on lack of evidence and the long period of honest concurrent use, the COA asserted that she was entitled to reach the conclusions she did. Further, the judge believed that if there genuinely was a likelihood of confusion, especially where there was co-existence for five years, there would be no lack of evidence to present. As the parties had been co-existing since 2007 (with Nuclei building their customer base since 2000), their commercial interests being very similar and both parties being well-established online, the absence of evidence held more weight than in cases where parties are new entrants to the market and are relatively small businesses.

As to the revocation for non-use, in their appeal, easyGroup argued that the trial judge had been wrong to dismiss its evidence of use. The trial judge concluded that with easyGroup’s experience in the industry, it should have kept accurate and updated records of its operations. The COA agreed, criticising easyGroup for lack of consistent evidence in its sales and customer numbers. The evidence submitted by easyGroup was contradictory and the witness from easyGroup was not helpful. Whilst easyGroup submitted many website screenshots to prove that the contested marks were visible on their websites to attract consumers, the COA explicitly held that marketing materials on their own are not sufficient to establish trade mark use. Evidence of sales is key in defending non-use cancellations.

easyGroup relied on a document headed "Partner statement for easyOffice" which showed commission amounting to £22,783.28 from bookings in 2014, £8,782.94 in 2015, £400 in 2016, £663.08 in 2017 and £1,115.59 in 2018. However, there was no evidence as to the document’s origin or manner of preparation. Additionally, there were problems with the interpretation and accuracy of the figures presented. The COA further made note that easyGroup had not presented any evidence relating to the numbers of visitors to its website or the numbers of page views.  Consequently, the existence of the website was rightly given less weight as evidence. Therefore, the trial Judge was considered entitled to find no genuine use of the mark. Consequently, easyGroup’s trade marks were revoked.

Take-Homes

This case highlights the importance of brand owners, especially larger and more experienced businesses, collating sufficient evidence of use.  Such evidence should be clear, precise and thorough in order to enforce their rights effectively. Further, evidence should include viewership details, sales data and website visits. Advertising evidence alone would rarely be sufficient to constitute genuine use of a trade mark.

Lastly, this case is a reminder to submit evidence of actual confusion to strengthen and support any likelihood of confusion argument presented. A lack of evidence of actual confusion in situations where a party has been using their mark for a substantive period of time can swing a Claimant’s case, as proven in this case.