W3 Ltd v Easygroup Ltd & Anor

W3 Ltd v Easygroup Ltd & Anor

The EASY trade mark was invalidly registered for 'advertising' and 'temporary accommodation' as it was descriptive and had not acquired distinctiveness. W3's use of 'EasyRoommate' and variants did not infringe any valid EU trade mark of easyGroup, as there was no likelihood of confusion or unfair advantage. There was insufficient evidence of actionable threats, and W3's UK trade mark was not invalid, subject to a restriction of specification. There was no passing off by W3.

Parties
Claimant: W3 Limited; Defendant: easyGroup; Third Party: Jean Camille Pons
Jurisdiction
England and Wales
Judgment Date
12 January 2018
Procedural Posture
Intellectual Property/trade Mark Infringement and Passing Off / Final Judgment After Full Trial
Outcome
All claims by easyGroup dismissed; W3's counterclaims partially allowed.
Legal Topics
Trade Mark Infringement, Passing Off, Trade Mark Validity, Revocation for Non Use, Groundless Threats, Acquiescence, Assignment of Goodwill
Intellectual Property Law Commercial Law Trade Mark Infringement Passing Off Trade Mark Validity Revocation for Non Use Groundless Threats Acquiescence +1 more

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Parties

W3 Limited

Claimant

easyGroup

Defendant

Jean Camille Pons

Third Party

Procedural Posture

Intellectual Property/trade Mark Infringement and Passing Off / Final Judgment After Full Trial

Legal Issues

  1. 1 Whether W3 infringed any valid EU trade mark of easyGroup by use of 'EasyRoommate' and variants in the UK and EU.
  2. 2 Whether easyGroup's EASY trade mark is valid or should be revoked for non-use.
  3. 3 Whether W3's UK trade mark is valid or should be revoked for non-use.

Ratio Decidendi

The EASY trade mark was invalidly registered for 'advertising' and 'temporary accommodation' as it was descriptive and had not acquired distinctiveness. W3's use of 'EasyRoommate' and variants did not infringe any valid EU trade mark of easyGroup, as there was no likelihood of confusion or unfair advantage. There was insufficient evidence of actionable threats, and W3's UK trade mark was not invalid, subject to a restriction of specification. There was no passing off by W3.

Court Disposition

All claims by easyGroup dismissed; W3's counterclaims partially allowed.

Orders

  • Declaration that the EASY trade mark is invalid in relation to advertising and temporary accommodation.
  • No infringement by W3 of any easyGroup EU trade mark by use of 'EasyRoommate' or variants.