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

easyGroup contends that the judge erred in principle when he held that there was no likelihood of confusion in relation to the Easylife Word Mark because he took into account irrelevant factors and failed to take into account relevant factors. The Defendants contend that, even if the judge erred, he reached the right conclusion.

easyGroup alleges four errors on the part of the judge. The first is that the judge based his comparison of retail services at [257] on what Easylife actually did, rather than on the services for which the Easylife Word Mark was registered. As the Defendants accept, easyGroup is correct that the services to be compared are those in the specification for the mark alleged to have been infringed rather than those actually provided under the mark. On the face of it, therefore, the judge did fall into error.

The Defendants nevertheless argue that the judge’s description of what Easylife does at [257], namely that it “provides a website from which various products, including ones made by third parties, can be purchased directly from it”, applies to all online retail services. It follows that it applies across the relevant part of the Easylife Word Mark’s specification. Thus the error was not a material one. The services provided by the Defendants to supporters are different: as the judge put it at [210], the Defendants provide “a platform for fundraising by retail”. Accordingly, the Defendants argue, the judge’s conclusion at [257] that there was “some similarity but only at a fairly high level, in that both are providing services in connection with online retail [emphasis added]” was a sound one.

easyGroup responds that the Defendants’ services are very similar, if not identical, to “retail services” since they amount to the retailing of services (including retail services) provided by third parties. In support of this easyGroup relies upon Case C-420/13 Netto Marken-Discount AG & Co KG v Deutches Patent- und Markenamt [EU:C:2014:2069], in which the Court of Justice held that “the provision of services by an economic operator which consist in bringing together services so that the consumer can conveniently compare and purchase them may come within the concept of ‘services’ referred to in” what is now Directive 2015/2426. Counsel for easyGroup argued that the services provided by the Defendants were comparable to those provided by price comparison and aggregator sites, and that what mattered for these purposes was that they brought the retailers’ offers together and enabled supporters to choose.

On this issue I prefer the Defendants’ arguments. While I accept that, on one level, the Defendants’ services can be viewed as amounting to the retailing of services, the average consumer would appreciate that the fundamental characteristic of those services is that they provide a convenient way for supporters indirectly to give money to good causes. As the judge found, the average consumer would appreciate that the underlying services were provided by third parties. The judge accepted that there was some similarity with retail services, but he made no error of principle in finding that the similarity was at a fairly high level.

Secondly, easyGroup argues that the judge erred at [261] in relying on the absence of the distinctive orange and white livery used by most of easyGroup’s licensees. easyGroup is correct that this is irrelevant to the allegation of infringement of the Easylife Word Mark, but it is clear from [247] that the judge recognised that this is “a simple word mark”. The judge only addressed the orange and white livery at [261] in the context of the “family of marks” argument raised by easyGroup. This argument was not relied on for the claim of infringement of the Easylife Word Mark.

Thirdly, easyGroup contends the judge erred in [262] in relying on a lack of actual confusion in respect of advertising services. This was not a relevant consideration, easyGroup argues, because the actual use of the Easylife Word Mark had been for a particular type of advertising service which was quite different to the Defendants’ advertising service. (I would comment in passing that this argument supports the judge’s decision on partial revocation of the Easylife Stylised Mark.) I agree that, on the face of it, this again appears to be an error on the part of the judge. But the context was the judge’s consideration of the likelihood of indirect confusion. easyGroup has not identified any cogent reason for concluding that indirect confusion is more likely on the correct premise that the services are identical, bearing in mind that the family of marks argument is not relied on for this purpose.

Fourthly, easyGroup says the Judge failed to take into account the identity of services when assessing likelihood of confusion. This is wrong: he expressly took this into account at [260] and [263].

Accordingly, I would dismiss the appeal on ground 5.