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

The Defendants contend that the judge erred in law or principle for four reasons which I will consider in turn.

First, the Defendants argue that the findings the judge made were only open to him if he also found that all the other elements of the mark were negligible, but he made no such finding. The basis for this argument is principle (d) of the standard summary for likelihood of confusion (paragraph 58 above). This is that it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements.

I do not accept this argument. It is true that, as counsel for the Defendants emphasised, the normal approach to the assessment of distinctive character applies in this context. Principle (d) is not concerned with the assessment of distinctive character, however, but the comparison between the marks (or, in the infringement context, between the mark and the sign). The purpose of that comparison is to assess whether, in combination with the other relevant factors, there is a likelihood of confusion. While section 46(2) also requires a comparison to be made between the mark as registered and the sign as used, the purpose of the comparison is different, namely to assess whether the differences alter the distinctive character of the mark as registered.

Furthermore, the part of principle (d) relied upon by the Defendants is designed to ensure that the comparison is carried out on the correct basis. The principle is that the comparison may only be carried out solely on the basis of the dominant elements if the other components are negligible. Otherwise, the comparison must be on the basis of the mark as a whole. This derives from case law correcting courts and tribunals who made the mistake of just comparing the dominant elements of complex marks even though the other components were not negligible.

The Defendants’ argument finds no support in the case law on variant forms. On the contrary, as counsel for easyGroup submitted, the authorities support the converse proposition. For example, in the Sony case, the General Court held at [48] that the figurative elements of the mark as registered “have only weak distinctive character and occupy merely an ancillary position in th[e] overall impression [of the mark]” and “have a relatively marginal visual impact”. The General Court did not hold that the figurative elements were negligible. The General Court nevertheless upheld the Board of Appeal’s finding that the omission of those figurative elements did not alter the distinctive character of the mark as registered.

The Defendants’ second argument is that the judge’s reasoning was internally inconsistent. They submit that the judge found in a number of places both when considering revocation (at [51]) and when considering infringement (at [87]-[88] and [105]-[106]) that the tick and, to a lesser extent, the strapline were important elements of the Easylife Stylised Mark; and that this is inconsistent with his conclusion that the omission of those elements did not alter the distinctive character of the Easylife Stylised Mark.

So far as revocation is concerned, there is no inconsistency in the judge’s reasoning. He found that the average consumer would notice the triangular form above the letter “i” in the Easylife Stylised Mark as registered and would interpret it as a tick, but would regard it as reinforcing the concept of “easylife”. Compared to Signs 1-3, he considered that the average consumer would be more influenced by the continuing presence of the tick than by the change in its position or presentation. Thus there was no alteration of the distinctive character. Compared to Signs 4-5, the judge acknowledged the absence of the tick, but concluded that this did not alter the distinctive character of the mark as registered because “easylife” was the dominant element and the tick merely reinforced that concept. As for the strapline, he held that the average consumer would not regard this as being of any particular trade mark significance. Thus its variation or omission did not alter the distinctive character of the mark as registered.

Turning to infringement, I accept that there appears to be some tension between the judge’s reasoning on the two issues. As I have explained, however, he was applying different tests for different purposes. Furthermore, even if there is inconsistency, that does not necessarily mean that the judge was wrong about revocation. The alternative possibility is that he was wrong about infringement. I will return to this question in that context.

The Defendants’ third argument is again one of inconsistency, namely that the judge’s findings in relation to the “easylife” element are inconsistent with his conclusion on variant forms. The Defendants contend that the judge’s analysis in [50] amounts to a finding that the word “easylife” had no more than the minimum degree of distinctive character to get over the registrability threshold, and that it necessarily follows that adding or subtracting any element that has some distinctive character affects the distinctive character of the mark as registered. I do not accept the premise of this argument. The judge did not say that “easylife” had no more than the minimum degree of distinctive character to get over the registrability threshold. He said in [50] that it had “an element of distinctiveness” and in [56] that it had “some distinctive character”. Given that “easylife” is, as the judge said in [50] “a made-up word” and “allus[ive]” (rather than descriptive of the services for which the Easylife Stylised Mark is registered), he plainly did not mean that it had no more than the minimum degree of distinctive character.

Finally, the Defendants argue that the judge’s decision was one that no reasonable tribunal could have reached given Mr Caplan’s evidence referred to by the judge at [51] and [53] that the tickball device was a core part of Easylife’s branding and that the change in the wording of the strapline between Sign 1 and Sign 2 had been a deliberate marketing decision. I do not accept this argument. The judge was entirely correct not to surrender his judgment to that of any witness: see Electrolux Ltd v Electrix Ltd (No 2) (1954) 71 RPC 23 at 31 (Sir Raymond Evershed MR). It was his task objectively to assess the issue from the correct legal perspective. Mr Caplan’s subjective opinion, even if admissible on this issue (a question which was not explored in argument), was not determinative.

Accordingly, I would dismiss ground 1 of the cross-appeal. I would nevertheless add that there is an alternative and preferable route to the conclusion which the judge reached with respect to Signs 1-3. Given that the tick in the mark as registered takes the place of the tittle (the dot of the “i”), and that it was found by the judge merely to reinforce the concept of “easylife” in the average consumer’s perception of the mark, it would easily be forgotten by the average consumer. Although the case was argued before the judge on the footing that Sign 1 was a single sign, the better view is that it consists of two signs side-by-side: the tickball on the left and “easylife lifestyle solutions” on the right. If the mark as registered is compared with the righthand sign, then it is plain in my view that the differences do not alter the distinctive character of the former. The fact that the tickball sign is used together with that sign does not affect this. (It would be different if use of the mark as registered, or a variant thereof, as part of a composite sign or in conjunction with another sign affected the perception of the average consumer of the mark as registered, or variant, as an indication of origin: see Case C-12/12 Colloseum Holding AG v Levi Strauss & Co.[EU:C:2013:253] and Specsavers International Healthcare Ltd v Asda Stores Ltd [2014] EWCA Civ 1294, [2015] FSR 8.) The change to, and omission of, the strapline in Signs 2 and 3 do not make any difference for the reasons given by the judge. As can be seen from my judgment in the easyfundraising case, this analysis has some significance in that context.