In November 2018 the approved judgement given by Mr Justice Arnold was released on arguably one of intellectual property lawÂs most controversial cases of this year. The claimant is the entrepreneur and founder of the company ÂEasygroup limited which is well known for the airline ÂEasyjetÂ. There are two defendants in this case the first being ÂEasy Fly Express Limited which is a company based in Dhaka, Bangladesh. The second defendant is Mr Chowdhury who is the chairman of ÂEasy Fly and also the registrant of the domain name Âwww.easyfly-express.comÂ.
This case was brought about because the claimants alleged that Âthe defendants use of the signs amounts to infringement of a number of registered trademarks and passing offÂ. Secondly Easygroup contends that Âthe similarity between the signs and the claimants registered trademark, particularly the ÂEasyjet and ÂEasyflight marks, are striking, and the defendants have imitated ÂEasygroups distinctive get upÂ. Â
Mr Justice Arnold then goes onto explain the applicable principles to be applied if the case is to be successful. The basic criteria was established in the case of AK Investment CJSC V Kyrgyz Mobile Tel Ltd (2011) UKPC 7, (2012) 1 WLR 1804 by Lord Collins of Mapesbury. They can be summarised as follows. First, the claimant must satisfy the court that, in relation to the defendant to be served with the proceedings, there is a serious issue to be tried on the merits of the claim i.e. a substantial question of fact or law or both. This means there has to be a real prospect of success on the claim.
Secondly, the claimant must satisfy the court that there is a good arguable case and that the claim against the defendant falls within one or more of the classes of case for which leave to serve out of the jurisdiction may be given (often referred to as gateways). Thirdly, the claimant must satisfy the court that in all the circumstances, England is clearly or distinctly the appropriate forum for the trial of the dispute and that in all the circumstances the court ought to exercise its discretion to permit service of the proceeding out of the jurisdiction.
For the claimants to have a real chance of success they must prove the signs use. It is explained that in order for the use of a sign to qualify as use in the UK or in the EU which infringes a UK or EU trademark, or amounts to passing off, the use must be targeted at the UK or elsewhere in the EU. The defendants argued that the claimants did not have a real prospect of success because the acts of ÂEasy fly were not targeted at the UK or anywhere else in the EU.
The defendant Mr Chowdhury explained that ÂEasy Fly is a small cargo airline which on average only flew 2.5 flights a week. 98% of those flights were domestic and only flew in Bangladesh. The airline has recently undertaken a few more flights outside Bangladesh to places such as Hong Kong but never anywhere in the EU and has no plans to do so because it would be an unviable cost.
Mr Chowdhury also went onto explain that the bulk of his business involved transporting live shrimp fry within Bangladesh. In regards to his website he explained that a customer had never reached his website through the claimantÂs website. The claimants argued that the defendants were trying to target the UK because the website and facebook page were in English. Mr Justice Arnold was unimpressed with this argument as Mr Chowdhury went onto explain English is a widely spoken language in Bangladesh. As a result of this Mr Justice Arnold acceded to the defendantÂs application and therefore dismissed the claimantÂs arguments.
This verdict of this case is fairly surprising because although it is clear the two airlines are different in what they provide the defendants mark ÂEasy Fly is very similar to the Claimants mark ÂEasyjet in colour and also in font. To some it may cause initial confusion as they are so similar however because the defendants show no intention of targeting the UK or the EU this is the reason for the verdict. To read the full case and verdict click on the link below!
http://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Ch/2018/3155.html&query=(easygroup)
