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

Variant forms. easyGroup accepted that Easylife had not used the Easylife Stylised Mark in the form in which it had been registered during the relevant period. It relied upon the use of five signs as being variant forms as shown below:

The judge set these signs out in a table in a different order and referred to them as “the Tickball Variant” (Sign 3), “the Tickball Everyday Variant” (Sign 2), “the Tickball Lifestyle Variant” (Sign 1), “the Text Variant” (Sign 5) and “the Text Lifestyle Variant” (Sign 4). As the judge explained, in closing submissions easyGroup accepted that there was no evidence of use of Sign 4 (otherwise, I presume, than in the form of Sign 1) during the relevant period. Accordingly, he did not need to consider whether Sign 4 was an acceptable variant of the Easylife Stylised Mark.

The judge assessed the distinctive character of the Easylife Stylised Mark as follows:

“155.

The mark comprises the text, written in black type as a single word, all in lower case, with a strap line beneath that describes the nature of the goods sold, and a decorative element that can be seen either as a triangle, part of which is shaded to create a ‘tick’ shape, or (in 3D) as a pyramid, two faces of which are more darkly shaded. The font used for the text is unremarkable save for the even tracking of the characters.

156.

The distinctive character of the mark is, in my judgment, partly in the conjoined word ‘easylife’ and partly in the design, with strap line and decorative elements added. The word ‘easylife’ is weakly distinctive (as compared with, e.g., ‘easytravel’, which is not inherently distinctive) because the concept of an easy life, which is emphasised by the strap line, is recognisable as an idea that has some meaning. However, the word is not strongly distinctive. Such greater distinctiveness as the mark has is attributable to the design elements.

157.

Mr Edenborough relied, in support of a case that the word ‘easylife’ was the only distinctive part of the mark, on the fact that Mr Wise said that the company was and is known as ‘easylife’; but that is unsurprising, given that the tickball or any other figurative element would not be reproduced orally.  As he accepted, aural characteristics were likely to be less material, given the use of the variants principally in catalogues and on websites….”

The judge held that Signs 1-3 altered the distinctive character of the Easylife Stylised Mark for the following reasons:

“162.

In my judgment, each of the three tickball variants creates visually a different overall impression from the mark: the design has been significantly changed. The prominent elements of the new designs are the word, the more decorative font and the outsize tickball motif. The changes in (or omission of) the strap line (in all cases except the Tickball Lifestyle Variant), the omission of the triangle/pyramid, the marked change of font, and especially the inclusion of the tickball (in the three tickball variants) all contribute to a different impression. What is distinctive of all three of the tickball variants is the word ‘easylife’ and the tickball; the change of font and the presence or absence of strap lines are somewhat less distinctive.

163.

Surprisingly, in closing submissions Mr Edenborough said that the tickball element was ‘entirely forgettable’. That is plainly wrong, both in terms of visual appreciation and on the evidence. Mr Wise ultimately accepted that the tickball (which is still used post-2022 in the new, easy+ branding of easyLife) was an essential element of the branding and an important part of the varied mark, whose purpose was to distinguish the brand. The tickball is a strong and distinctive element of the variants on which it appears. Perhaps the idea of it came from the original design of the mark, but it would not be recognised as such by the average consumer. The ball is new, the tick is prominent, and the size and position (and impact) of the device are entirely different.

164.

In my judgment, accordingly, the three tickball variants have, overall, a different distinctive character, given that the visual appreciation of them would be the most prevalent form. The difference derives from the visual and conceptual combination of the word ‘easylife’ and the strong tickball motif. They are distinctive in a different way from the registered mark.”

The judge held that Sign 5 altered the distinctive character of the Easylife Stylised Mark for the following reasons:

“171.

I have found that it is not the words ‘easylife’ alone that make the mark in this case distinctive. Accordingly, the loss or change of the other distinctive elements alters the distinctive character of the mark, and the Text Variant is not a variant form within s.46(2) either. There was no evidence from the Claimant that the variants in issue were used because they were more suited to inclusion on particular documents produced or used by the business, or that the first easylife mark could not be used. On the contrary, Mr Wise confirmed that the Tickball Variant was first used as early as 2001, and other variants followed in 2013, 2019 and 2022, and he and Mr Oakenfold said that different signs were used in this way (often at the same time) to see which, if any, was most effective, but otherwise without discriminating between them.

172.

This is therefore not a case of minor variations to a registered mark in order to accommodate particular locations of branding and what they could sensibly accommodate.”

The judge went on to explain that, after he had sent his judgment to the parties in draft, he had been provided with the judgment of Mr Caddick KC in the Easy Live (Services) case. The judge noted that Mr Caddick KC had come to the opposite conclusion with respect to the variants. The judge declined to follow Mr Caddick KC’s decision for the reasons he gave at [175]:

“I have naturally read carefully the Deputy Judge's reasoning for his conclusion to see whether I am persuaded that I should follow his decision, despite my own evaluative conclusion that the differences in the variants altered the distinctive character of the mark as registered. I am not persuaded that the word "easylife" is the only distinctive element of the mark, or that the average consumer would detect the tick within the triangle motif in the registered mark and link it to the tickball motif. Even placing the forms side-by-side, which the average consumer does not have the ability to do, it is not an obvious connection. There was no evidence before me to support an argument that the aural characteristics of the mark and variants were of any real significance. For the reasons that I have given, I therefore decide that the distinctive character of the mark is varied by each of the variant forms.”

Partial revocation. The judge held that, if the variants did not alter the distinctive character of the Easylife Stylised Mark, the Class 35 services specification should be partially revoked for the following reasons:

“188.

Applying the guidance in Merck, the goods and services in relation to which the mark was used during the relevant period were, so far as advertising and promotion services were concerned, the provision of advertising by placing inserts in Easylife’s published catalogues. The specification of ‘advertising services; promotion services’ specified in the registered mark is very broad indeed: as Mr Aikens on behalf of the Defendants submitted, ‘it covers everything from a creative ad agency to providing advertising space in an in-flight magazine, to developing a media buying strategy for a multinational company, to Google running the Google sponsored online advertising market. The same can be said for promotion services.’ Mr Aikens went on persuasively to explain why banner advertising on a website is an entirely different sub-category, with different qualities and consequences, from DRMG’s clients’ physical inserts in the Easylife catalogue, but did not dissent from my suggestion that any kind of advertisement placed within a physical publication, whether inserted or printed on a page, may not, in its essentials, be different from the limited form of insert advertising carried on by Easylife.

189.

The average consumer of advertising services of this kind is, in my view, likely to regard a physical, non-electronic advertisement of this kind differently from any more structured or web-based form of advertising. So, for that reason, there is an identifiable sub-category of advertising and promotional services concerned with advertising placed or inserted into printed publications. To confine the sub-category to inserts in catalogues would in my view unfairly limit the ability of Easylife to extend its range to cognate activities, though web-based advertising (which Easylife at no stage conducted, either before or during the relevant period) would be a different sub-category.

190.

Accordingly, in agreement with the Defendants’ analysis, I consider that a fair specification of the first easylife mark as regards advertising and promotion services would have been ‘providing advertising or promotional space in printed publications’.”