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

easyGroup contends that the judge was wrong to conclude that, if there had been permissible variant use of the Easylife Stylised Mark, the specification should be partially revoked so as to restrict the Class 35 specification to “providing advertising and promotional space in printed publications” because that is not an independent sub-category of “advertising services; promotional services”. Respondents’ notice ground 1 supports this conclusion.

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”.

easyGroup argues that the judge erred in law because he failed to apply the criteria of purpose and intended use laid down in ACTC and Ferrari. I accept that the judge did fall into error in this respect, but I consider that he nevertheless reached the correct conclusion.

I am not persuaded that it is possible to identify any narrower purpose served by Easylife’s Insert Service than advertising the customer’s goods or services.

That leaves the intended mode of use of Easylife’s Insert Services. Although the judge did not address this, it is implicit in his reasoning at [188] that advertising services can 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. The question is whether he was correct about this.

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”.

The judge’s reasoning in [189] 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 his reasoning at [188] 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 the judge for the restricted specification was sufficiently clear and precise, but on reflection I have concluded that it is acceptable from that perspective.

Accordingly, I would dismiss the appeal on ground 2.