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

easyGroup contends that the judge was wrong partially to revoke the second easyJet mark so as to restrict “retail services connected with the sale of jewelry, watches, purses, wallets, pouches and handbags” to “retail services provided to airline passengers …”. The Defendants dispute this, but if ground 3 is allowed the Defendants contend by their cross-appeal that the specification should be restricted to “inflight retail services …”, which as noted above was the restriction adopted by Bacon J in the Beauty Perfectionists case.

easyGroup again 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. In addition, easyGroup argues that the judge erred in law because the CJEU held in ACTC at [53] that “the fact that the goods were aimed at different publics” was not a relevant criterion for defining an independent subcategory of goods.

It is not necessary to decide whether the judge made the first error, because I agree that he made the second. Furthermore, I have some difficulty in understanding who qualifies as an airline passenger for this purpose. Counsel for the Defendants submitted that an airline passenger was someone who currently has a booking with an airline even if the flight is some time in the future. That definition fits the cohort of consumers referred to by the judge at [141], but it is not obvious that that is how the average consumer would understand the expression “airline passenger”. Furthermore, what is the position if the consumer in question cancels their flight or the airline cancels the flight?

Turning to the cross-appeal, although the judge did not explicitly say so, it appears that the reason why he did not adopt Bacon J’s “inflight retail services” formulation is that the services are not all provided inflight. (There is a factual difference between this case and Beauty Perfectionists in this respect, because Bacon J did not find pre-ordering proved with respect to the goods then in issue.) On the contrary, as the judge found, the services are also provided to persons who have not yet even arrived at the airport. In addition, even if the services are provided on board an aircraft, they may be provided while the aircraft is on the ground. Indeed, passengers may be encouraged to start browsing the selection of goods available before take-off. Thus Bacon J’s formulation is simply not an accurate description of the services in question.

During the course of argument, counsel for the Defendants submitted that an alternative formulation to those adopted by Bacon J and the judge would be “retail services in connection with the transportation of passengers by air”. In my view this is more accurate than Bacon J’s formulation, but it suffers from similar problems of uncertainty as the judge’s formulation. More fundamentally, it is difficult to see how this formulation complies with ACTC and Ferrari.

It is therefore necessary for this Court to apply the applicable principles afresh. So far as the purpose of easyJet’s services is concerned, it is no different to that of any other retail service. It is to bring a selection of goods together to enable consumers of such goods conveniently to make a choice. I would add that I disagree with the judge’s proposition in [144] that the goods are “essentially of a gifts character”. They may be purchased in order to be given to another person, but they may also be purchased for the purchasers’ own use.

Turning to the intended mode of use, it is difficult to see that there is any relevant distinction between the retail services received by a person who sits at home (or elsewhere) and orders goods from the easyJet website and the retail services received by a person who sits at home (or elsewhere) and orders goods from another retail website. The only point of difference is that in the former case the goods are delivered to the purchaser onboard an aircraft. But I cannot see that that is a relevant distinction, particularly when the retail services concern goods which are at least primarily intended for use once the consumer has disembarked from the aircraft.

On the other hand, I do not accept easyGroup’s argument that it is not possible to discern independent sub-categories within “retail services”. Counsel for easyGroup submitted that Case C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873 was authority for the proposition that it was not necessary to specify “retail services” in detail, rather what was required was to specify the goods or types of goods to which those services related. As can be seen from [40]-[42], however, the question which the Court of Justice was considering was whether it was necessary to “specify in detail the service(s) for which the applicant seeks protection” i.e. the specific services embraced by the concept of “retail services”. The Court was not considering whether there are independent sub-categories within “retail services”, which is a different question.

It seems to me that, like “advertising services”, retail services can be differentiated by medium, as exemplified by the (b) part of the Class 35 specification of the Easylife Stylised Mark. In the present case, easyJet provides two sub-categories of retail services: (i) retail services provided by means of an internet website and (ii) retail services provided on board an aircraft. Although an aircraft is, from this perspective, merely a type of premises, it is such a unique type that it can be differentiated from other kinds of premises. I do not think that the average consumer would think that retail services provided on board aircraft are provided by the same or economically-connected undertakings as retail services provided in a shop. By contrast, the average consumer might think that retail services provided by means of an airline’s website are connected with retail services provided by another website, not least because the software involved is likely to be similar in its functioning.

Accordingly, I would allow the appeal on ground 3, and dismiss the cross-appeal. I would substitute an order that the relevant part of the specification be amended to read “retail services connected with the sale of jewelry, watches, purses, wallets, pouches and handbags provided by means of an internet website or on board an aircraft”.