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

The Defendants contend that the judge erred in law or principle in holding that their services were identical or highly similar to those for which the Easylife Marks are registered.

In the case of the Easylife Stylised Mark, my conclusion on cross-appeal ground 2 removes the basis for the judge’s finding of identity of services in the case of “advertising services”, which leaves the question of similarity. In my judgment there is a moderate degree of similarity between the Defendants’ Advertising Service and the Defendants’ Catalogue Service and “providing advertising or promotional space in printed publications” in that they are all forms of advertising, but differentiated by medium (online versus print). In the case of the Defendants’ Auction Broadcast Service the similarity is low because this is not an advertising service.

My conclusion with respect to cross-appeal ground 2 does not affect the Easylife Word Mark. As noted in paragraph 52 above, the Defendants do not dispute that the Defendants’ Advertising Service is identical to “advertising services”. The Defendants nevertheless contend that the judge was wrong to hold that the Defendants’ Catalogue Service and the Defendants’ Auction Broadcast Service were identical or highly similar to the “bringing together” services in the specification of the Easylife Stylised Mark and to the “retail services” in the specification of the Easylife Word Mark. (As explained below, the “bringing together” wording is alternative wording for a retail service.) Given the concession with respect to the Defendants’ Advertising Service, this contention can only affect the extent of any infringement. I shall therefore address it relatively briefly.

The Defendants contend that their services differ from “retail services” because the Defendants do not conclude any sales with customers bidding on the Defendants’ Website. If the bidder is successful at auction, they transact with the auction house (or perhaps the vendor - it matters not for this purpose).

This argument is based on the judgment of the Court of Justice in C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873. In that case the Court was called upon to decide (i) whether, as a matter of principle, trade marks could be registered in respect of retail services, and if so (ii) the degree of specificity with which such services should be described. The Court’s answers were that (i) in principle a trade mark could be registered in respect of retail services, and (ii) it was sufficient to use general wording such as “bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods”, but the goods or types of goods must be specified.

In that context the Court said at [34]:

“…the objective of retail trade is the sale of goods to consumers. That trade includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the above-mentioned transaction with the trader in question rather than with a competitor.”

The Defendants argue that this demonstrates that a retail service must include a sale by the provider of the service. I do not accept this argument for a number of reasons. First, it ignores the Court’s reasoning at [35]-[49], all of which is focussed upon the services provided by a retailer which are distinct from sale of the goods.

Secondly, it would mean that a retail service is not provided to persons who browse in a shop, but do not purchase the goods then and there (e.g. because they go home and purchase the goods from the retailer’s website), which would be contrary to the rationale for permitting registration of trade marks for retail services, namely that there is a value in the provision of retail services over and above the bare sales transaction.

Thirdly, as the judge pointed out, a department store or a market provides a retail service even if sales are made to consumers by third-party concessions operating within the store or market. It is true that, as counsel for the Defendants argued, those examples do involve sales, but the sales are not made by the provider of the overall retail service.

Fourthly, the argument would be inconsistent with the Court of Justice’s reasoning in the later case of Case C-420/13 Netto Marken-Discount AG & Co. KG v Deutsches Patent- und Markenamt[EU:C:2014:2069]. In that case the Court held that it was possible to register a trade mark in respect of the retailing of services, and not merely goods. While the Court’s judgment again refers at points to consumers purchasing the services, the core of the reasoning is at [34]:

“It is unnecessary to examine whether services can, like goods, be the subject of ‘retail trade’ in the proper sense of the term, since it is clear, as was pointed out by the governments which submitted observations to the Court and by the Commission, that there are situations in which a trader selects and offers an assortment of third party services so that the consumer can choose amongst those services from a single point of contact.”

While it will usually be in the trader’s own interest to ensure, so far as possible, that consumers purchase the service in question through the trader, the trader provides the service of enabling consumers to compare and choose between the services offered even if the consumer then goes directly to the source.