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

easyGroup contends that the judge was wrong to hold that there had been no genuine use of the easy.com mark within the relevant period because he was wrong to regard the use made as purely promotional use. The Defendants support the judge’s reasoning, but in the alternative the Defendants contend by their respondents’ notice that he should have held that genuine use had not been established because there was no evidence of the number of active @easy.com email accounts during the relevant period.

Appeal ground 4 requires consideration of one of the points identified in Nuclei at [106](4). In Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759 the trade mark proprietor relied upon use of the trade mark WELLNESS (together with the word DRINK) upon soft drinks given to consumers who bought its clothes as being use of the mark in relation to non-alcoholic drinks in Class 32. The trade mark was also registered in respect of clothing in Class 25, but there was no claim for revocation of that part of the registration. In answer to a question referred by the Oberster Patent- und Markensenat (Austrian Supreme Patent and Trade Mark Court), the Court of Justice held at [20] that there was no genuine use of a trade mark “where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter”.

easyGroup argues that the judge was wrong to hold in [152] that the use of easy.com relied upon was use purely to promote the sale of other goods or services. easyGroup provided an electronic mail service to consumers under that sign, and there is no dispute that it is identical to the trade mark. Like many email services, it was provided free of charge, but it is common ground that this in itself does not prevent the use from being genuine use. easyGroup accepts that its commercial motivation for providing the service free of charge was to enable it to promote other goods and services marketed by easyGroup licensees to users of the email service. As easyGroup points out, however, users of the email service did not have to engage in any other transaction in order to obtain the email service. By contrast, in Silberquelle consumers only received the soft drink if they purchased an item of clothing. As the case law of the Court of Justice makes clear, the acid test is whether the use in question is apt “to create or preserve an outlet for the goods or services that bear” the trade mark (see e.g. Silberquelle at [18]). easyGroup’s use of the easy.com mark did create or preserve a share of the market for email services.

The Defendants’ answer to this argument is to submit that it is not necessary for the item only to be provided if the consumer purchases a different product or service in order for the use to qualify as promotional. I agree with this. It is not difficult to imagine scenarios in which consumers receive free promotional items without having to purchase another product or service. On the facts of the present case, however, I do not consider that this is a sufficient answer. The question is whether the average consumer would perceive the provision of the item in question to be purely for the purpose of promoting the sale of other goods or services or whether they would perceive it to amount to trade in the item in its own right even if with the ulterior purpose of promoting the sale of other goods or services. As counsel for easyGroup submitted, services have a different quality to goods in this respect: a service is less likely to be perceived as being provided purely for the purpose of promoting the sale of other goods or services. In my judgment the recipients of easyGroup’s email services would have perceived that they were receiving an email service that was competitive with other free email services, albeit that many of them would have appreciated easyGroup’s commercial rationale for doing so. Thus I do not consider that the use was purely promotional.

I therefore turn to respondents’ notice ground 2. The Defendants contend that, because there was no evidence before the judge of the number of active @easy.com accounts during the relevant period, easyGroup had not established genuine use of the mark. The judge noted the absence of this evidence at [149], but he did not hold that this meant that easyGroup had failed to prove genuine use of the mark. Instead, he held that the use was not “of the requisite quality”.

Turning to the evidence, easyGroup’s witness Anthony Anderson explained in his witness statement that easyGroup entered into an agreement with an email service provider in September 2000 to provide a service to people who wanted an @easy.com email address. He said that the service had continued to be provided at easy.com until June 2020, when users were migrated to easyemail.org because Sir Stelios wanted to use @easy.com for corporate email addresses.

Thus the evidence establishes nearly 20 years’ use, which extended into the relevant period (4 February 2017 to 3 February 2022). Furthermore, it was use on a sufficient scale to justify migrating users to a different address rather than simply closing the service down in June 2020. It is also relevant to note that Mr Anderson went on to say that from 2005 to 2017 there were almost 55 million pages views of the easy.com website and 10.7 million users. Furthermore, easyGroup relied upon documentary evidence that, between 1 January and 2 August 2017, the easy.com website had hundreds of thousands of users and several million page views. Although users of the website may not have been users of the email service, the website promoted the email service.

As counsel for the Defendants pointed out, easyGroup could easily have given evidence as to the number of email accounts, and it only has itself to blame for its failure to do so. I see the force of this, but even so I consider that the evidence just establishes use which is sufficient to create or preserve a market share for email services under the trade mark bearing in mind the nature of the service and that there is no de minimis rule (see Nuclei at [106](7)).

Accordingly, I would allow the appeal on ground 4 and dismiss respondents’ notice ground 2.