easyGroup fails to halt ‘Easy Nurse’ TM
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The decision was handed down on March 4.
Automaker Auto Kelly successfully applied for the mark ‘EasyBike’ for goods and services related to electric bicycles in October 2019, after which easyGroup applied to invalidate the registration in March 2020.
An ‘easy’ family of brands
The company, owned by Stelios Haji-Ioannou, argued that the goods and services were identical and similar to its own goods and services covered by its earlier registered marks that included the word ‘easy”, and that there was a likelihood of consumer confusion.
It held that easyGroup was formed in 1998 for the “purpose of formalising a strategy” to create an ‘easy’ family of brands, and claimed that its earlier marks all benefit from an “elevated distinctive character” due to the word mark ‘easy’ .
It argued that the disputed mark looked like an extension of its brands, which would cause consumers to establish a link between that mark and the earlier registrations, including ‘easyJet’ ‘easyCar’, ‘easyCoach’, ‘easyBus’ and ‘easyGroup’ .
EasyGroup argued that by using the later mark, Auto Kelly would “free-ride” on its reputation without needing to invest time or marketing expense and that this use could diminish easyGroup’s reputation.
It further contended that the unauthorised use of the later mark would dilute the distinctive character of its “easy family of brands”, making it more difficult for consumers to distinguish its services from those of others.
Auto Kelly accepted that its opponent held a reputation in respect of “airline services” under its easyJet brand but countered that this reputation does not extend beyond these services.
Concept of ‘easy’ not distinctive
The IPO found that the concept of a bicycle that is easy to use to be different to that of a car, bus or coach, or related services, and while it accepted that there was an overlap in respect of the shared concept of something being “easy”, this concept alone was not distinctive. “The overall concept created by the earlier marks is dissimilar to that conveyed by the contested mark. I find the marks to be conceptually dissimilar,” said the hearing officer, Rosie Le Breton.
The officer also stated that it was unclear from the evidence that the mark ‘easyGroup’ is widely recognised among consumers, and that she struggled to find use of the mark as a trademark, “let alone that its use is such that its inherent distinctive character has been enhanced”.
‘No direct or indirect confusion’
While she concluded that the reputation held for airline services under the easyJet mark is strong, she found no complementarity between the goods and services in question. “I find it very unlikely for competition to exist between airline services and electric bicycles, and impossible in respect of the remaining goods and services covered by the proprietor,” said Le Breton.
“I find on this basis that the distinctive character for ‘easyJet’ in respect of airline services has been raised to a high level. It remains however, that the distinctive character of the mark is held in the full mark ‘easyJet’,” she added.
“There is no evidence that the element ‘easy’ alone has been elevated through use,” she concluded, adding that there would be neither direct, nor indirect confusion between the marks in question.
The IPO upheld Auto Kelly’s trademark registration and ordered easyGroup to pay costs.
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easyJet, easyGroup, trademark, UKIPO, Stelios Haji-Ioannou, distinctive mark, consumer confusion