About this case:

• Citation:
  [2023] EWCA Civ 1247
• Judgment:
  External link
• Court:
  England and Wales High Court
• Judge:
  Lord Justice Arnold

Appellant easyGroup Ltd argued that Mrs Justice Bacon of the High Court had erred in finding there was honest concurrent use and that it had failed to prove genuine use of the marks during the disputed period. The first defendant, Nuclei Ltd, acquired the domain name easyoffices.com in 2000 and had traded using the name since then, with the other respondents being related companies in the IWG group. 

The appeal was heard in the Court of Appeal by Lord Justice Arnold, Lord Justice Nugee and Sir Christopher Floyd. Simon Malonic KC and Stephanie Wickenden appeared for the appellant and Mark Vanhegan KC and Jaani Riordan for the respondents. 

White label arrangement 

The appellant held four trade marks comprising the word “EASYOFFICE” or “EASYOFFICES”. The first defendant had traded in the advertising and brokerage of serviced office spaces and related services since late 1999 under various permutations of the name “Easyoffices”. The logos for Easyoffices across the years differed significantly in design from the marks held by the appellant. 

In evidence, the appellant stated that the idea for the easyOffice business dated back to September 2002, as one of many business ventures by easyJet’s founder, but its first location did not open until November 2007. While the easyOffice business was initially successful, by 2012 it had lost the majority of its customers and it was ultimately dissolved following voluntary liquidation. Despite this, the easyOffice name was used as part of a “white label” arrangement with a competitor of the first respondents, Instant Offices Ltd, until 2019. 

It was held by Bacon J that the claim failed because none of Nuclei’s services were identical to any of the services for which the appellant’s marks were registered, due to the defendant running a brokerage service rather than itself providing office space. While the businesses could be said to be related to some extent, it was not enough to engage section 10 of the Trade Marks Act 1994. 

On appeal it was argued that, from 2014 to 2019, the Instant Offices agreement had provided use of the mark, as had use of a space in Croydon as an office for hire. It was further argued that the judge had erred in her treatment of the evidence and in not considering the likelihood of confusion by the ordinary consumer. 

Low inherent distinctiveness 

In a judgment with which the other two judges agreed, Arnold LJ said of Bacon J’s initial assessment: “The principal criticism advanced by counsel for easyGroup was that the judge had failed to recognise that there had been relatively little opportunity for confusion to have occurred given the relatively modest scale of both parties’ businesses. I do not accept this criticism. The judge did consider what opportunity there had been for confusion to occur. Furthermore, she clearly took the view that confusion should have been relatively straightforward to detect given the online nature of both businesses.” 

He continued: “That assessment was one which was open to her even if another judge might have taken a different view. Although the judge’s conclusion may seem a little surprising at first blush, it is explicable by the considerations that the word mark EASYOFFICE has relatively low inherent distinctiveness and the average consumer’s level of attention would be moderately high.” 

On honest concurrent use, Arnold LJ added: “Nuclei’s use was plainly honest. First, it was the senior user. By the time [the appellant’s marks] were applied for, Nuclei had been trading for over two years and was building up its business. By the time easyOffice was launched, Nuclei had been trading for over five years. Secondly, Nuclei had changed its livery when requested to do so by easyGroup in 2001.” 

He went on to say: “Nuclei did nothing to exacerbate any confusion at that stage: on the contrary, it took steps to avoid confusion. Counsel for easyGroup submitted that Nuclei had exacerbated the likelihood of confusion by its change of logo in May 2011, but there is no evidence that that change did result in any confusion with any of the Trade Marks.” 

Arnold LJ concluded: “Counsel for easyGroup suggested that the judge’s approach amounted to penalising easyGroup for the previous success of easyOffice, when it should have counted in easyGroup’s favour, but in my view the judge did no such thing. What she did do was to take into account the fact that easyGroup is an experienced operator which should be well able to prove genuine use of its trade marks, and she was right to do so.” 

The appeal was therefore refused.