CA-2024-002240 - [2025] EWCA Civ 946

Variant forms. easyGroup accepted that Easylife had not used the Easylife Stylised Mark in the form in which it had been registered during the relevant period. It relied upon the use of five signs as being variant forms. The judge set these out in a table which I reproduce below:

In the case of Sign 1, the judge identified the differences between that sign and the Easylife Stylised Mark at [48] as follows:

“ a. The use in Sign 1 of a conventional dot over the letter ‘i’ in ‘easylife’ in place of the triangle which, in the mark, had acted as the dot over that letter ‘i’ and, by means of different degrees of shading, contained a tick device;

b.

The addition in Sign 1 of a larger white tick contained in a black circle placed in front of the word ‘easylife’ (‘the tickball’); and

c.

The use of a different font for the word ‘easylife’.”

He held that, viewed through the eyes of the average consumers, these differences did not, whether taken individually or together, alter the distinctive character of the registered mark for the following reasons:

“50.

First, in my judgment, both types of average consumer would see the dominant element of both the Easylife Stylised Mark and Sign 1 as being the word ‘easylife’. Aurally, that word is unaltered and … the average consumer is far more likely to use that word when identifying the origin of the relevant goods or services than to try to describe the figurative elements of the mark or of Sign 1. Visually, the ways in which that word is depicted in the mark and in Sign 1 are very similar. In both cases it is depicted without a break using lower case letters throughout and I do not think that the relatively small difference in the fonts used would be seen as of any real significance. Conceptually, also, the word ‘easylife’ is the dominant element of both the mark and Sign 1. Whilst the fact that the words ‘easy’ and ‘life’ would be seen as normal descriptive words with a clear meaning …, the fact that they are pushed together to form a made-up word would, in my judgment, give the combination an element of distinctiveness in the eyes of the average consumer whilst also alluding to the customer experience offered by Easylife – the possibility of an easier life and a stress-free experience – a concept reinforced by the ‘tick’ element that is contained in both the mark and in Sign 1.

51.

As regards that tick, it is clearly more prominent in its ‘tickball’ form in Sign 1 than it is in the triangle in Easylife Stylised Mark. However, I do not accept the Defendants’ argument that the average consumer would not perceive the tick within the triangle in the Easylife Stylised Mark. Whilst the shading of the triangle does not serve to emphasise the tick as strongly as the tickball, the tick is undoubtedly present and the unusual use of a triangle (as opposed to the conventional dot) to form the ‘I’ of the word ‘easylife’ would draw the attention of the average consumer, and the average consumer would recognise it as reinforcing the concept (as I have said above) of the word ‘easylife’. Accordingly, notwithstanding Mr Caplan’s comment that the tickball was a core part of and fundamental to Easylife’s branding, I do not think that this difference alters the distinctive character of the mark. As set out above, changes to figurative elements of a mark are less likely to be regarded as changing the distinctive character of a mark and, in my judgment, the dominant feature was and remained the word ‘easylife’. … it seems to me that the average consumer would be more influenced by the continued presence of the ‘tick’ than by the change in the geometric shape surrounding it, the change in colour or the change in position.”

In the case of Sign 2, the judge identified the following additional differences at [52]:

“d.

The use in Sign 2 of the colour blue for the font and the circle; and

e.

The change in the lower strapline so that in Sign 2 it reads ‘everyday solutions’ instead of ‘lifestyle solutions’.”

He held that these additional differences did not change the assessment for the reasons he gave at [53]:

“If, as I have concluded, Sign 1 does not alter the distinctive character of the Easylife Stylised Mark, then it seems to me that the same must apply as regards Sign 2. In the first place, I do not think that the adoption of a blue font for the word ‘easylife’ and for the circle around the tick would be seen as significant in terms of the distinctive character of the Easylife Stylised Mark. The same seems to me to be the case in relation to the change in the lower strapline. In my judgment, notwithstanding Mr Caplan’s evidence that this change had been a deliberate marketing decision, given that the words of the strapline are of little distinctive character and are depicted in a much smaller font than the word ‘easylife’, the average consumer would not regard this change as altering the distinctive character of the mark.”

In the case of Sign 3, the judge noted at [54] that this moved further away from the Easylife Stylised Mark in that, in addition to differences (a) to (d), the strapline was omitted altogether, but held that the average consumer would not see this change as altering the distinctive character of the mark because “the average consumer would not regard those words as being of any particular trade mark significance”.

In the case of Sign 4, the judge noted at [55] that this omittedall of the figurative elements and stylisation of the Easylife Stylised Mark, but retained the words “easylife” and “lifestyle solutions”. He held that the differences did not change the distinctive character of the Easylife Stylised Mark.

In the case of Sign 5, the judge noted at [56] that this omitted all the elements of the Easylife Stylised Mark save for the word “easylife”. He was nevertheless satisfied that Sign 5 was an acceptable variant because (i) the words “lifestyle solutions” would not be seen as particularly significant by the average consumer and (ii) the word “easylife” had some distinctive character and was the dominant element of the Easylife Stylised Mark.

Use. As can be seen from paragraph 9 above, the judge divided the Class 35 services for which the Easylife Stylised Mark is registered into two categories (a) and (b), and further divided category (b) into four subcategories. In relation to category (a), it was common ground that there was only one service in relation to which any of the variant forms had been used during the relevant period, namely Easylife’s Insert Service. It was also common ground that at least some of the variant forms had been put to use in relation to the category (b)(ii) and (iii) services, but not the (b)(i) and (iv) services.

Partial revocation. The Defendants contended that a fair specification for category (a) services reflecting the use that had actually been made would be “providing advertising space by way of printed inserts into printed retail catalogues”. The judge declined to restrict the specification in that manner for the reasons he gave at [74]:

“… In the present case, the respective advertising services are being offered to the same type of third party customer for the same purpose (advertising that customer’s goods or services). As appears from Merck and the other cases referred to above, the purpose for which the services are provided is important and here, whilst it is possible to describe the service provided by Easylife in narrower terms than those of the registration, the purpose of the service being provided seems to me to be the same as that provided for under the registration. The customer is looking for a means to advertise its goods or services. The fact that that service is provided through providing space for inserts in a catalogue is, as Mr Edenborough submits, a means for delivering an advertising service rather than being indicative of a different or distinct category of service.”

The judge revoked the registration in so far as it covered the (b)(i) and (iv) services.