EASYMOVE has an easy ride

Ireland

In Jarrett v easyGroup IP Licensing Limited (July 12 2007), the acting controller has dismissed easyGroup's opposition and allowed a series of trademarks consisting of the words 'easymoves' and 'easymove', as amended, to proceed to registration.

Colin Jarrett applied to register a series of four trademarks consisting of the words 'easymoves' and 'easymove' in Classes 16 and 39 of the Nice Classification. The application was opposed by easyGroup IP Licensing Limited. Jarrett requested that the application be amended by the deletion of the first two marks in the series. The opposition continued and was based primarily on easyGroup's proprietorship and use of a number of trademarks commencing with the word 'easy'. easyGroup is made up of a number of companies which includes easyJet Airline Company Limited. In addition to passenger services, the easyJet Airline Company provides a range of airline services under various 'easy' prefixed brands (easyKiosk for in-flight catering, easyJetramp for baggage handling and easyTech aircraft for repair and maintenance). It has also diversified into other areas of commerce under 'easy' prefixed trademarks, including the easyCar car rental services, the easyEverything internet café chain, the 'easy.com/easydotcom' email services, the easyValue online price comparator services and the easyMoney financial services.

easyGroup alleged that the application for registration was made in bad faith. In 2003 Jarrett had corresponded with easyGroup proposing collaboration in the promotion of the easyMove service, including links from the easyJet website. In his counterstatement, Jarrett stated that he had no knowledge of the extensive use claimed by easyGroup of the marks listed. The acting controller accepted this argument. He regarded as unsustainable easyGroup's arguments that the implementation of easyGroup's business model by Jarrett under a trademark that is allegedly similar to that of easyGroup was necessarily indicative of lack of good faith. He also held that bad faith would not be established merely by showing that the trademarks applied for are similar to certain trademarks that are or have been the subject of applications by an opponent.

Moreover, the acting controller accepted that Jarrett had invented and adapted the trademark EASYMOVES for specialist removal services purely for its inherent attractiveness as a trademark for such services. He did so independently of any use that easyGroup had made of its trademarks and not with a view to profiting from any reputation that easyGroup had under those marks.

As regards the marks EASYJET and EASYMOVES, the acting controller took the view that the conceptual significance of these marks was their most memorable feature and was thus more important than their visual or aural identity in determining their overall impression (ie, it is the meaning of the words that is likely to register first and foremost with the average person). The acting controller also held that the respective meanings of the words are quite different. Therefore, the marks are not confusingly similar.

In addition, the acting controller did not accept that familiarity with easyGroup's services offered under the trademark EASYJET would lead the average consumer to suppose that services such as those covered by Jarrett's application originate from or are linked with easyGroup. Hence, Jarrett's mark would not cause the average person to be reminded of easyGroup's EASYJET trademark and its use would not lead to confusion on the part of the public.

The acting controller also compared Jarrett's mark with easyGroup's other marks - namely, EASYEVERYTHING, EASY, EASY.COM and EASYDOTCOM, EASYMONEY, EASYHOTEL, EASYVALUE, EASYPOINTS, EASYLIFE, EASYEXTRAS, EASYSERVICES, EASYTECH, EASYKIOSK, EASYRAMP and EASYCAR. He did not consider that the use of the trademark EASYMOVES would result in confusion on the part of the public with any of the earlier trademarks relied upon by easyGroup. While he admitted that consumers would have been familiar at the relevant date with the trademark EASYJET, he was not persuaded that the same could be said of the other marks, as insufficient information was provided with regard to the extent of the use that was made of these marks. He did not accept that a family of 'easy' prefixed trademarks had become established in the public perception at the relevant date. Hence, there was no likelihood of confusion.

The acting controller also rejected the argument that use of the trademark EASYMOVE, even if it did not lead to outright confusion, took unfair advantage of the extensive advertising and promotion that easyGroup had invested in its 'easy' prefixed trademarks. He did not accept that easyGroup's trademarks constitute collectively an earlier trademark. Even as regards the earlier mark which might have had a requisite reputation (ie, EASYJET), the degree of similarity between the marks was insufficient to cause consumers to establish a link between them. Such linking was a prerequisite to any unfair advantage.

Patricia McGovern, DFMG Solicitors, Dublin

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