Easynet Group Plc & Anor v Easygroup IP Licensing Ltd

Easynet Group Plc & Anor v Easygroup IP Licensing Ltd

The correct legal test is to assess the mark as a whole to determine if it is descriptive, without requiring a finding of 'unusualness' in the combination of descriptive elements. The Hearing Officer applied the correct approach and was entitled to find that 'easy.com' is not descriptive under section 3(1)(c).

Parties
Appellant/opponent: Easynet Group Plc; Appellant/opponent: Easynet Limited; Respondent/applicant: easyGroup IP Licensing Limited
Jurisdiction
England and Wales
Judgment Date
14 July 2006
Procedural Posture
Trade Mark Opposition Appeal / Appeal From Decision of Comptroller's Hearing Officer to High Court
Outcome
Appeal dismissed
Legal Topics
Distinctiveness of Trade Marks, Descriptiveness of Trade Marks, Combination of Descriptive Elements, Domain Names as Trade Marks, Section 3(1)(b) and 3(1)(c) Trade Marks Act 1994
Intellectual Property Trade Marks Distinctiveness of Trade Marks Descriptiveness of Trade Marks Combination of Descriptive Elements Domain Names as Trade Marks Section 3(1)(b) and 3(1)(c) Trade Marks Act 1994

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Parties

Easynet Group Plc

Appellant/opponent

Easynet Limited

Appellant/opponent

easyGroup IP Licensing Limited

Respondent/applicant

Procedural Posture

Trade Mark Opposition Appeal / Appeal From Decision of Comptroller's Hearing Officer to High Court

Legal Issues

  1. 1 Whether the mark 'easy.com' is descriptive under section 3(1)(c) of the Trade Marks Act 1994
  2. 2 Whether a combination of two descriptive elements requires an 'unusual' combination to be registrable
  3. 3 Whether the Hearing Officer applied the correct legal test

Ratio Decidendi

The correct legal test is to assess the mark as a whole to determine if it is descriptive, without requiring a finding of 'unusualness' in the combination of descriptive elements. The Hearing Officer applied the correct approach and was entitled to find that 'easy.com' is not descriptive under section 3(1)(c).

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed
  • Costs awarded to respondent in the amount of £3180