Bristol law firm claim victory in major trademark case

Bristol law firm TLT has helped to win a major trademark court case.

easyCOSMETIC, founded in 2008, appeared in the High Court to address allegations that they had infringed easyGroup’s trademarks by using the sign easyCOSMETIC to sell cosmetics, perfumes and toiletries online to consumers in Germany and Austria.

EasyGroup are the owners of the EASYJET brand and other “easy” brands including easyHotel, easyCar, easyBus.

EasyGroup initially complained about the use of the easyCOSMETIC sign in 2011 but took no further action. Proceedings were then issued in March 2020.

EasyGroup relied on its “easy family of brands” to support arguments that the defendants’ sign was likely to be confused with the easyJet brand.

Despite the use of a family of marks, the Judge, Bacon J, did not accept that the average consumer would view a mark comprising “easy” before another word as indicating goods or services associated with easyGroup.

Accordingly, Bacon J held that the trademarks were not infringed. It was held that similarities between the two marks were offset by their differences – which were both visual and conceptual. In addition, neither party had found actual confusion from their customers or the wider public despite very extensive disclosure searches being carried out by both sides. The Court also held that easyGroup has lost the right to use aspects of the EASYJET mark on grounds that is has not been put to genuine use. As such, certain goods for which the mark is registered were limited to in-flight retail services only.

This was a decisive victory for the easyCOSMETIC business which, had it lost, would have faced a Europewide rebrand. The TLT team was led by partner Graeme Orchison supported by Sarah Quaynor, Humna Nadim and Edward Downes. Counsel for the defendants was James Abrahams KC and Maxwell Keay of 8 New Square.

Graeme Orchison, partner at TLT said:  “This was a hard-fought case which faced numerous complexities over the course of proceedings including navigating documents and supporting witnesses in German. This is also a significant case that should act as a warning to brand owners that regardless of the size of the brand, trademarks comprising descriptive words such as EASY, may face hurdles to establish infringement.”