Trade mark decision
- BL Number
- Decision date
- 21 January 2004
- Hearing Officer
- Mr M Reynolds
- 38, 41, 42
- Easy 4 Students Limited
- Easygroup IP Licensing Limited
- Sections 5(2)(b), 5(3) & 5(4)(a)
Section 5(2)(b) - Opposition failed.
Section 5(3) - Opposition failed.
Section 5(4)(a) - Opposition failed.
Points Of Interest
- As per summary.
In their statement of grounds the opponents referred to over 80 registrations or applications but the Hearing Officer decided that their claim could be adequately tested under Section 5(2)(b) by considering six registrations or applications which have prior rights for identical and similar services as those of the applicants.
The Hearing Officer thus compared the opponents’ marks easy (pending), easy everything (three registrations) and easy.com (two registrations) with the mark in suit. While he accepted that there were some obvious similarities in that easy and easy.com are contained within the mark in suit, he took particular note that 'easy' is a very descriptive and non-distinctive term and that conceptually the marks are different, in that in the case of the mark in suit 'easy' is combined with a word describing the target audience for the services at issue. Overall, the Hearing Officer considered that there was little likelihood of confusion and that the opposition under Section 5(2)(b) failed.
Under Section 5(3) the Hearing Officer considered the marks easyjet, easyrentacar and easyeverything since the opponents have a reputation in such marks. However, on the same basis, as identified above, the Hearing Officer concluded that these marks are not similar to the mark in suit. Opposition thus failed on this ground.
The opponents also failed in their ground under Section 5(4)(a) – Passing Off- since the Hearing Officer considered that they were in no better position under this Section as compared to Section 5(2)(b).
Two other issues dealt with by the Hearing Officer:
The opponents pointed to the fact that the applicants’ internet site had links to third party sites containing shocking material. Damage to the "easy" brand could thus occur. The Hearing Officer decided that users of the applicants' site would be well aware that the content of third party sites was not the responsibility of the applicants and decided no action was necessary in the context of this decision. (Section 5(3)).
The opponents referred in their evidence to a "family" of marks based on the "easy" element. However, this ground had not been particularised at the outset and the Hearing Officer saw no need to deal with it in detail. He did, however, observe that in a High Court case "easyrealestate" the Deputy Judge had stated that the opponents were not entitled to claim a monopoly in the word 'easy'. (Section 5(4)(a)).
Full decision O/018/04 71Kb