Easynet Group Plc & Anor v Easygroup IP Licensing Ltd [2006] EWHC 1872 (Pat) (14 July 2006)

Easynet Group Plc & Anor v Easygroup IP Licensing Ltd [2006] EWHC 1872 (Pat) (14 July 2006)

The correct legal approach is to assess the mark as a whole for descriptiveness or distinctiveness, without imposing a separate requirement that the combination of descriptive elements be 'unusual'. The Hearing Officer applied the correct test and was entitled to find that 'easy.com' as a whole was not descriptive of the goods and services in question. The appeal is dismissed.

Citation
[2006] EWHC 1872 (Pat)
Parties
Appellant: Easynet Group Plc; Appellant: Easynet Limited; Respondent: easyGroup IP Licensing Limited
Jurisdiction
England and Wales
Judgment Date
14 July 2006
Procedural Posture
Trade Mark Appeal / Appeal From Decision of Comptroller's Hearing Officer
Outcome
Appeal dismissed
Legal Topics
Distinctiveness of Trade Marks, Descriptiveness of Trade Marks, Combination of Descriptive Elements, Section 3(1)(b) and 3(1)(c) Trade Marks Act 1994, Appeal Standards
Intellectual Property Trade Marks Distinctiveness of Trade Marks Descriptiveness of Trade Marks Combination of Descriptive Elements Section 3(1)(b) and 3(1)(c) Trade Marks Act 1994 Appeal Standards

Case Brief

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Parties

Easynet Group Plc

Appellant

Easynet Limited

Appellant

easyGroup IP Licensing Limited

Respondent

Procedural Posture

Trade Mark Appeal / Appeal From Decision of Comptroller's Hearing Officer

Legal Issues

  1. 1 Whether the mark 'easy.com' is descriptive or devoid of distinctive character under sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994
  2. 2 Whether a combination of two descriptive elements requires an 'unusual' or 'special' combination to be registrable

Ratio Decidendi

The correct legal approach is to assess the mark as a whole for descriptiveness or distinctiveness, without imposing a separate requirement that the combination of descriptive elements be 'unusual'. The Hearing Officer applied the correct test and was entitled to find that 'easy.com' as a whole was not descriptive of the goods and services in question. The appeal is dismissed.

Court Disposition

Appeal dismissed

Orders

  • Costs awarded to respondent in the sum of £3180