TLT wins High Court claim for easyCOSMETIC

National law firm TLT has successfully defended a claim on behalf of the online retailer, easyCOSMETIC.

easyCOSMETIC, founded in 2008, has appeared in the High Court to defend allegations that they had infringed easyGroup’s trade marks by using the sign easyCOSMETIC to sell cosmetics, perfumes and toiletries online primarily to consumers in Germany and Austria. easyGroup are the owners of the easyJet brand and other “easy” brands including easyHotel, easyCar, easyBus.

easyGroup initially complained about the use of the easyCOSMETIC sign in 2011 but took no further action. Proceedings were then issued in March 2020.

easyGroup relied on its “easy family of brands” to support arguments that the defendants’ sign was likely to be confused with the easyJet brand. Despite the use of a family of marks, the Judge, Mrs Justice Bacon, did not accept that the average consumer in the UK, Germany or Austria would view a mark comprising “easy” before another word as indicating goods or services of or associated with easyGroup.

Accordingly, Bacon J held that the trade marks were not infringed. The Judge held that similarities between the two marks were offset by their differences - which were both visual and conceptual. In addition, neither party had found actual confusion from their customers or the wider public despite very extensive disclosure searches being carried out by both sides. The Court also held that easyGroup has lost the right to use aspects of the EASYJET mark on grounds that is has not been put to genuine use. As such, certain goods for which the mark is registered were limited to in-flight retail services only.

This was a decisive and very important victory for the easyCOSMETIC business which, had the claim succeeded, would have faced an EU-wide rebrand. The TLT team was led by partner Graeme Orchison supported by Sarah Quaynor, Humna Nadim and Edward Downes. Counsel for the defendants was James Abrahams KC and Maxwell Keay of 8 New Square. The easyCOSMETIC business was also supported in Germany by Attorney at Law Daniel Terheggen from Patent- and Trademark Attorneys Lindner Blaumeier.

Graeme Orchison, partner at TLT said: “This was a hard-fought case which faced numerous complexities over the course of proceedings including navigating German language documents and supporting witnesses giving evidence in German. This is an important judgment that should act as a warning to brand owners that regardless of the size of the brand, trade marks comprising descriptive words such as EASY, may face serious hurdles in establishing infringement.”