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17 January 2018Trademarks

English court rules against easyGroup in EasyRoommate dispute

The English High Court has ruled against easyJet’s parent company easyGroup in its trademark dispute against flat-sharing site EasyRoommate, owned by a company called W3.

Mr Justice Arnold delivered his judgment in the High Court of Justice, Business and Property Courts, Chancery Division on Friday, January 12.

EasyGroup is the holding company of the 29 ‘easy’ brands, which include easyJet, easyProperty, and easyHotel.

EasyRoommate functions as an online marketplace, connecting those offering spare rooms with people seeking accommodation.

Jean Pons, the French owner of the site, brought the case against easyGroup in 2015 as an action against “unjustified threats” made by easyGroup regarding the use of ‘easy’ trademarks.

EasyGroup denied that the threats were unjustified, and asked the court to prevent Pons’s business from using the ‘EasyRoommate’ registered mark in relation to accommodation across multiple European countries.

Arnold noted the trademark dispute was of “considerable complexity” as, at the start of the trial, there were 44 agreed areas of dispute spanning 22 years.

W3 is the owner of UK trademark number 2,492,498, which covers accommodation services and database management, among others.

EasyGroup owns multiple EU trademarks, and of particular relevance to the complaint was the mark ‘easy’, EU trademark number 1,699,792, which covers accommodation services and the advertising of them.

EasyGroup complained that the use of the ‘EasyRoommate’ mark in relation to the advertising of shared accommodation infringed its mark. In response, W3 claimed that easyGroup’s ‘easy’ mark was invalid under EU law.

Relying on the dictionary definition of the word “easy”, W3 asserted that the average consumer, when seeing the word “easy” in relation to advertising and accommodation, would understand that the services are easy to buy or use. It therefore portrays a characteristic of the service and should be available to all traders offering such services.

EasyGroup argued that the word “easy” on its own does not function as a descriptive term in relation to advertising or accommodation.

Arnold agreed with W3, finding that the ‘easy’ mark is invalid in relation to the advertising and temporary accommodation services as “the word easy does denote a quality or characteristic of the services”. The flat-sharing site did not infringe any of the easyGroup’s trademarks through using its own ‘EasyRoommate’ mark in relation to the advertising of accommodation.

The judge added that the ‘EasyRoommate’ mark is valid, but that the specification of the mark’s services must be restricted.

Arnold rejected the claim that unjustified threats had been made through easyGroup’s letters, holding it lawful for easyGroup to take legal measures to protect its brand. Pons’s claim for damages in excess of £1 million ($1.4 million) was rejected.

Sir Stelious Haji-Ioannou, founder and owner of the ‘easy’ brands, said that easyGroup will appeal against the decision to safeguard its IP and brand rights. Haji-Ioannou continued to say that he was “very pleased” the judge recognised easyGroup’s forming of the “easy family of brands”, which he claims will assist any future attempts to enforce brand rights against third parties.

A spokesperson for easyGroup told WIPR that the company has until the February 2 to apply for permission to appeal.

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