CA-2024-00277 - [2025] EWCA Civ 1000

easyGroup contends that the judge erred in law or principle in holding that the variant signs relied upon by easyGroup altered the distinctive character of the Easylife Stylised Mark. In its grounds of appeal and skeleton argument easyGroup only challenged the judge’s conclusions with respect to Signs 2, 3 and 5 on this ground. During the hearing easyGroup applied for permission to amend the grounds of appeal to extend this challenge to Sign 1. The Defendants opposed this application.

easyGroup argues that the judge made four errors. First, he erred in his evaluation of the distinctive character of the Easylife Stylised Mark. Secondly, he failed to consider the independent distinctive role of the word “easylife” in the variants. Thirdly, he wrongly required evidence of the reason for use of a variant form instead of the mark as registered. Fourthly, he took irrelevant evidence into account.

Although counsel for easyGroup framed the first alleged error as an error of law, he was not able to point to any legal mistake in the judge’s assessment of distinctive character. It may be noted that, unlike Mr Caddick KC, the judge did not ask himself what the dominant element of the Easylife Stylised Mark was; but counsel for easyGroup did not submit that this in itself amounted to an error of law.

The real complaint, upon analysis, is one of either a gap in the logic or an inconsistency in the reasoning. In [155] the judge found that the strap line is descriptive, that the tick device that replaces the tittle (the dot over the “i”) is decorative and that the font is unremarkable. It follows, easyGroup argues, that they are non-distinctive. Despite this, the judge concluded in [156] that the distinctive character of the Easylife Stylised Mark lay partly in the word “easylife” and partly in the strapline and decorative elements. The basis for this conclusion was that “easylife” was “weakly distinctive”, and that “such greater distinctiveness as the mark has is attributable to its design elements”. That could only be the case if those elements were distinctive. Furthermore, the judge accepted in [157] that the figurative elements would not be reproduced orally.

I consider that this criticism of the judge’s reasoning is justified. For the reasons the judge recognised in [155] and [157], the memorable part of the Easylife Stylised Mark is the compound word “easylife”. That word may not be particularly distinctive, but it is what gives the Easylife Stylised Mark almost all of its distinctive character. I would not go so far as to conclude that, even taken together, none of the other elements make any contribution to distinctive character at all, but their contribution is minimal.

easyGroup’s second criticism of the judge’s reasoning was not clearly articulated in easyGroup’s skeleton argument or oral submissions and only came into focus as a result of an observation from the bench. Counsel for easyGroup relied upon Kitchin LJ’s statement in Specsavers International Healthcare Ltd v Asda Stores Ltd [2014] EWCA Civ 1294, [2015] FSR 8 at [22] that “if the mark as registered … is used only as part of a composite mark…, the use must be such that the mark as registered is itself perceived as indicative of the origin of the goods or services”. On its face, this statement is not apposite to the present case, because none of the Signs relied upon by easyGroup consists of the Easylife Stylised Mark together with other elements. Counsel for easyGroup nevertheless argued that “easylife” played an independent distinctive role in each of the variants, and that the judge had fallen into error because he had neglected this.

This argument makes more sense when turned around so as to focus on the role played by the other elements, particularly in the case of Signs 1-3. 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, in addition to Specsavers International Healthcare Ltd v Asda, Case C-12/12 Colloseum Holding AG v Levi Strauss & Co. [EU:C:2013:253]. The change to, and omission of, the strapline in Signs 2 and 3 do not make any difference to this analysis.

easyGroup’s third criticism is that the judge was wrong, at [171], to rely upon the absence of evidence from easyGroup as to the reasons why the variants were used instead of the Easylife Stylised Mark as registered. I agree with this. The question is an objective one as to the effect of the variations on the distinctive character of the mark as registered. As the judge correctly noted at [133], the matter is to be considered “through the eyes of the average consumer of the goods or services in question”. Evidence from the trade mark proprietor as to their subjective reasons for using variants instead of the mark as registered would be inadmissible.

easyGroup’s fourth criticism is that the judge was wrong, at [163], to have regard to the evidence of Mr Wise about the importance of the tickball. easyGroup contends that this evidence was irrelevant. Again, I agree with this. As I have said, the question is an objective one to be considered through the eyes of the average consumer. I would add that Mr Wise’s evidence is perfectly consistent with the analysis set out in paragraph 71 above.

Since the judge’s evaluation was flawed, it is necessary for this Court to reconsider the issue. In my judgment none of the variants altered the distinctive character of the Easylife Stylised Mark, for the reasons given in paragraphs 69-71 above in the case of Signs 1-3 and the reasons given by Mr Caddick KC in the case of Sign 5.

I would add that I do not agree with the approach adopted by the judge at [175] when confronted with Mr Caddick KC’s decision. On an evaluative decision such as this, it is of course possible for two courts to reach opposite conclusions without either making any error of law or principle. As noted above, on appeal an appellate court is not justified in substituting its own decision for that of the lower court just because it disagrees with it. In my judgment a court of coordinate jurisdiction should adopt the same approach to an earlier decision in respect of exactly the same issue, for essentially the same reasons as those articulated by the Supreme Court in Iconix at [94]. The judge did not identify any error of law or principle in Mr Caddick KC’s reasoning, he simply disagreed with the conclusion. Furthermore, the judge failed to recognise that the effect of his doing so was to “trump” Mr Caddick KC’s decision, because the judge’s decision led to revocation of a trade mark registration that Mr Caddick KC had not revoked even though there was no material difference in the evidence.

Finally, I must deal with easyGroup’s application to amend its grounds of appeal. The Defendants objected to this on grounds of procedural fairness. As counsel for the Defendants pointed out, the Defendants noted that easyGroup was not relying upon Sign 1 in their skeleton argument dated 16 May 2025, yet no application to amend was made until the first day of the hearing. By then it was too late for the Defendants to respond by applying to amend their respondents’ notice to challenge the judge’s finding at [186] that there had been genuine use of Sign 1.

At first blush this is a powerful objection. In the end, however, I am not persuaded by it for the following reasons. First, the objection is unconnected with the merits of ground 1. Indeed, ground 1 applies with more force to Sign 1 than it does to the other Signs. Thus there is nothing that the Defendants can say in opposition to ground 1 so far as it concerns Sign 1 in addition to what they have already said in relation to Signs 2, 3 and 5. Secondly, easyGroup’s omission of Sign 1 from this ground is inexplicable and appears to have been an oversight. Thus the application to amend should not have come as a surprise, even if its lateness did. Thirdly, Sign 1 is in issue on the Easy Live (Services) appeal, where the defendants are represented by the same solicitors and junior counsel (who argued this part of the case on the present appeal). If there was a viable point to have been raised by way of respondents’ notice in this appeal, it would have been raised as part of the cross-appeal in the Easy Live (Services) appeal, where Mr Caddick KC made the same finding at [67], but no such ground was advanced. Lastly, although the amendment application was made very late, the Defendants could have advanced an argument in response on the second day of the hearing, but they did not attempt to do so.

Accordingly, I would grant easyGroup permission to amend its grounds of appeal to extend ground 1 to Sign 1, and allow the appeal on ground 1.