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

The Defendants contend that the judge should have held that the enhanced distinctive character he found the Easylife Marks to have was confined to the services actually provided by Easylife. easyGroup disputes this, and contends that the enhanced distinctive character generated by use of the Easylife Marks extended beyond the services provided by Easylife. The judge was uncertain about this issue, but took the view that it did not matter.

Who is right about this is an issue of law. We were informed by counsel on both sides that there was no authority which determined this issue. I have to say that I find that difficult to believe, but I shall assume that the parties are correct. Approaching the issue as a matter of principle, I accept counsel for easyGroup’s submission that the enhanced distinctive character generated by use of a trade mark will not be normally be confined to the precise goods or services in relation to the which the mark has been used. Rather, there will be a penumbra which extends beyond those goods or services. The extent of that penumbra will be a question of fact. In the present case, I am sceptical that the enhanced distinctive character of the Easylife Marks extends across the full breadth of the specifications, but it is not necessary to decide precisely how far it extends.

In the case of the Easylife Word Mark, the Defendants also contend that the judge made a separate error in that he held at [138] it was probable that the Mark had acquired a distinctive character “by reason of Easylife’s extensive trading since September 2020”. As the Defendants point out, the judge held at [28](d), and reiterated at [129], that the relevant date for assessing the infringement claim in relation to the Easylife Word Mark was 14 September 2020. The judge therefore cannot have intended to say “since September 2020” in [138], but it is not obvious what he did mean. The parties should have asked the judge to clarify this paragraph when the judgment was circulated in draft, but they did not. In those circumstances I accept counsel for easyGroup’s submission that the most likely explanation is that the judge meant to say “before”. This is because he found that the Easylife Stylised Mark had acquired an enhanced distinctive character by reason of the extensive use made of the variant forms of it, including Sign 5, since 2000. Given his assessment that none of the variant forms altered the distinctive character of the Easylife Stylised Mark, it would have been a short step to conclude that the Easylife Word Mark benefitted from that enhanced distinctive character from the effective date of its registration.