easyGroup and Orange marks not identical

In easyGroup IP Licensing Limited v Orange Personal Communications Services Limited, a hearing officer at the UK Trademarks Registry has rejected an opposition to the registration of a series of marks featuring words prefixed by the term 'easy' on an orange background. The hearing officer held that although mobile phone operator Orange Personal Communications Services owns a registration for a particular shade of orange, the two parties' marks were not identical.

Under Section 5(1) of the UK Trademarks Act 1994, which is based on the Community Trademark Directive, "a trademark shall not be registered if it is identical with an earlier trademark", and if it is for the same goods or services as those covered by the earlier mark. The meaning of 'identical' in relation to trademarks was recently considered by the European Court of Justice (ECJ) in LTJ Diffusion SA v SADAS Vertbaudet SA (see ECJ interpretation of 'identical' narrows trademark owners' rights).

In the LTJ Diffusion Case, the ECJ held that a sign can be considered identical to a trademark if it either reproduces the mark with no changes or if, when assessed globally, it differs only in insignificant details that would go unnoticed by the average purchaser. The ECJ's interpretation in LTJ Diffusion was considered by the hearing officer in the case at hand.

Orange opposed easyGroup IP Licensing's application, relying on its prior rights in a specific shade of the colour orange. Following the decision in LTJ Diffusion, Orange applied to amend its grounds of opposition to include Section 5(1) of the Trademarks Act.

Orange argued that according to the text of its earlier registrations, the colour orange was the predominant colour applied to the packaging or promotional materials for the goods or services in question. It was therefore implicit in the specific monopoly granted that other matter may be added to the surface of the materials and that any such additions would be encompassed within the definition of the trademark.

The hearing officer rejected Orange's argument. The signs applied for contained significant additions: words prefixed by the term 'easy' and therefore could not be considered as identical.

Furthermore, the hearing officer held that the use of the word 'predominant' in the description of Orange's marks did not grant it a monopoly to cover the addition of other matter. A fixed point of reference is required when filing a trademark application that enables comparison with later marks. The addition of words prefixed by the term 'easy' was therefore exactly that - an addition. As such, the additional words were not part of Orange's monopoly and the marks were not identical pursuant to the ECJ's reasoning in LTJ Diffusion.

Accordingly, the hearing officer refused to allow Orange to amend its opposition to include claims under Section 5(1).

Daniel Lowen, Bird & Bird, London