When applying for trade mark protection, it is important to carefully include goods and services which you will use consistently when operating. The trade mark dispute between easyLiveAuction.com and easyGroup illustrates the risk of unused services forming part of a trade mark, and their potential to be rescinded.

Background

easyGroup Ltd (“easyGroup”) is the group behind easyJet and has a number of registered trade marks including easyJet, easyHotel, and easyEnergy.

Easy Live Services Ltd (“ELS”) attempted to register various logos containing the words ‘EasyLive Auction’ and ‘easyLiveAuction.com’ as trade marks (the “Applications”). easyGroup claimed the Applications infringed their own registered trade marks. ELS counterclaimed that several of easyGroup’s trade marks should be revoked because easyGroup was not utilising all the services included as part of the trade mark registrations. In simple terms, ELS argued the trade marks should be revoked for non-use.

Judgement

The judge concluded the Applications infringed easyGroup’s marks on the basis of taking unfair advantage of easyGroup’s reputation as the signs were visually similar with bold font and lower-case letters. The judge held this was likely to cause the average consumer to link ELS to easyGroup.

Whilst this was an initial win for easyGroup, the judge did, however, agree with ELS that some of the services in easyGroup’s trade mark registrations were not being used. Therefore, these trade marks should be narrowed to remove certain aspects of the scope of protection, including:

• Advertising and marketing services from ‘easyGroup’
• Advertising and auctioneering from ‘easyProperty’
• Credit card services, monetary affairs and banking services from ‘easyMoney’

Key takeaway

As this case demonstrates, goods or services which you are not using consistently can be held as invalid and removed from the scope of the trade mark’s protection.

At Hamlins, we have the expertise to advise on effective drafting of trade mark applications to ensure our clients have the best possible protection and limit the potential for allegations of non-use. Further, we are best placed to represent our clients in invalidity proceedings, with extensive experience of acting for both claimants and defendants.

If you would like a conversation about how to best protect your brands, please get in touch.