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

The Defendants contend that the judge erred in law or principle because the judge did not ask himself what a fair specification of services would be having regard to the use that had actually been made of (the variant forms of) the Easylife Stylised Mark. In the alternative, the Defendants contend that the judge’s conclusion was one no reasonable tribunal could have reached. The Defendants argue that “advertising services” is a very broad category of services, that the judge wrongly identified the relevant purpose as “advertising th[e] customer’s goods or services” and that this would mean there could never be any subcategory of “advertising services”. (Neither side distinguished between “advertising services” and “promotional services”, and I shall follow their example.)

The first way the Defendants put this ground ignores the fact that, at the end of [73], the judge expressly recited the Defendants’ argument that “a fair specification, one reflecting the use made of the mark, would be ‘providing advertising space by way of printed inserts into printed retail catalogues’”. In [74] he rejected that argument.

More fundamentally, this way of putting the argument does not grapple with the judge’s reasoning. Although the judge did not articulate it in precisely this way, it seems to me that the reason why he reached the conclusion he did was that he was not persuaded that “providing advertising space by way of printed inserts into printed retail catalogues” was an independent subcategory of “advertising services”. The real question is whether he was correct to reach that conclusion.

The judge’s reasoning was that the purpose served by Easylife’s Insert Service was “advertising th[e] customer’s goods or services” and that the provision of advertising space by inserts in catalogues was “a means for delivery of an advertising service”.

As the Court of Justice made clear in ACTC and Ferrari, the essential criteria which must be applied in determining whether a category of goods or services can be divided into independent subcategories are purpose and intended use. It is not sufficient that different goods may be aimed at different publics or sold in different shops or that different goods or services belong to different market segments. These criteria are easier to apply to goods than to services, in particular because it is easier to distinguish between the purpose and the intended use of goods than it is to distinguish between the purpose and the intended use of services. In the case of services, it seems to me that the logic of the Court of Justice’s approach means that one should consider the intended mode of use of the services in question.

As the Court of Justice made clear in Ferrari at [43], the ultimate question is “whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark”.

Although the Defendants argue that the judge was wrong to hold that the purpose of Easylife’s Insert Service was “advertising th[e] customer’s goods or services”, counsel for the Defendants was unable convincingly to identify any narrower purpose served by Easylife’s Insert Service than “advertising th[e] customer’s goods or services”.

That leaves the intended mode of use of Easylife’s Insert Services. The judge did not in terms address this question, but he did consider the “means for delivering” the service. In my judgment the judge was correct to decide that “providing advertising space by way of printed inserts into printed retail catalogues” was not an independent subcategory, because that means of delivery could not be distinguished by either purpose or intended mode of use from other means of delivery involving printed advertising. To take the most obvious illustration, the average consumer of advertising services would be likely to assume that the undertaking which provided Easylife’s Insert Service was the same as, or economically linked to, an undertaking which provided advertising space in the catalogues themselves.

The judge did not consider whether advertising services could be divided into independent subcategories by reference to the different media involved: printed publications, radio, television, outdoor (billboards and the like), direct mail and online. That is understandable because neither party argued for this. It is nevertheless worth noting that, in determining whether partially to revoke a specification of goods and services, the court is not limited to the wording proposed by the parties, but is at least entitled, if not positively required, to form its own view provided that it does so in a procedurally fair manner: see Sky Ltd v SkyKick, in particular at [327].

In considering this question, assistance is provided by consideration of the Nice Classification (12th ed, 2024 version). (For an explanation of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and its role in the trade mark system, see Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch), [2010] ETMR 49 at [6]-[27], affd. [2011] EWCA Civ 645, [2011] ETMR 40.)  The judge was not referred to this. Nor did the parties raise it before this Court, but we invited written submissions on it after the hearing.

Among the services listed in Class 35 are “advertising by mail order” (basic number 350077), “direct mail advertising” (350024), “online advertising on a computer network” (350084), “outdoor advertising” (350152), “radio advertising” (350040) and “television advertising” (350044). Curiously, there are no entries for newspaper and magazine advertising. Nevertheless, it can be seen that the Nice Classification recognises a number of types of advertising service which are differentiated by the medium involved. The purpose for which it does so is, as easyGroup emphasised, solely that of classification. In that respect, what matters is what they have in common rather than how they differ. Nevertheless, it is pertinent to ask why these services are separately listed. In my judgment it is because, although they have the same purpose, their intended modes of use differ. Moreover, the average consumer of one of those services would not necessarily think that the provider of that service provided the others. Thus if one applies the test laid down in ACTC and Ferrari, they are independent sub-categories of “advertising services”.

In the easyfundraising case Fancourt J took the view at [187]-[188] that “there is an identifiable sub-category of advertising and promotional services concerned with advertising placed or inserted into printed publications” because “any kind of advertisement placed within a physical publication, whether inserted or printed on a page, may not, in its essentials, be different from [EasyLife’s Insert Service]”. Although, as I discuss in my judgment in that case, Fancourt J did not apply the criteria of purpose and intended use, this reasoning recognises that the average consumer of advertising services might well assume that the undertaking that provided EasyLife’s Insert Service was the same as, or economically linked to, an undertaking which provided the services of placing printed inserts into other printed publications such as newspapers and magazines and of providing advertising space in such publications themselves. It is implicit in this reasoning that the average consumer of advertising services would not make the same assumption in respect of advertising services in other media such as online. Thus it accords with the principle that advertising services can be differentiated by medium, and hence intended mode of use, even though their purpose is the same.

I was at one stage concerned as to whether the wording adopted by Fancourt J was sufficiently clear and precise, but on reflection I have concluded that it is acceptable from that perspective.

I would therefore allow ground 2 of the cross-appeal to the extent that it espouses Fancourt J’s formulation of the appropriate wording. Accordingly, the Easylife Stylised Mark should partially be revoked so as to replace the words “advertising services; promotional services” in the Class 35 specification with the words “providing advertising or promotional space in printed publications”.