It has been long enshrined in trade mark law, that a registered trade mark must be protected from being exploited by a third party for commercial gain without authorisation from the owner. One would think that this principle was simple enough to follow, but in an era of growing ecommerce and companies investing more in expanding their branding, third parties are still falling foul of the above rule.
One of the most recent examples of trade mark infringement involved the EasyGroup (the owners of EasyJet airlines) and a Cypriot company’s ‘ezy.com’ mark. At first glance, one may not see the latter mark as infringing the former, but as ‘EZY’ has been used as an airline code by EasyJet for a number of years, it was strongly argued that there was a ‘likelihood of confusion’ to the UK consumer. Furthermore, both marks registered goods/services in class 41 (services for education, training, entertainment, and various sporting and cultural activities).
The Trade Mark Act 1994 (the Act) states the following on the relative grounds of trade mark infringement:
5 Relative grounds for refusal of registration.
(1 ) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
One can see from the above, that the EasyGroup’s mark had clearly been infringed from a commercial perspective (the Cypriot company was trading using a mark that the average UK consumer would have believed was associated with the EasyGroup company). Subsequently, the EasyGroup had a right to take legal action against the Cypriot company.
The EasyGroup sought an invalidation procedure (the legal procedure to cancel a registered mark) on the basis that the Cypriot company’s mark should not have been registered in the first place, as the latter mark infringed their own. As a result, the UK intellectual Property Office (‘UKIPO’) agreed to invalidate the Cypriot’s company’s mark.
By Fatima Amedu