Stories

Hansel Henson has acted for the successful applicant, the Support Group (UK) Limited, in a significant UKIPO decision concerning the word mark EASY.

For trade mark lawyers, the decision is notable, but perhaps not hugely surprising, for two reasons. First, the registration, which was applied for over a quarter of a century ago, has been revoked in its entirety for non-use. Secondly, it has been declared invalid on absolute grounds, meaning it is treated as never having been validly registered.

For business more generally, it is important that they are free to use the word “easy”.  Premier Inn recently saw off easyGroup’s High Court claim against it for alleged infringement through use of the tag-line “Rest Easy".  Similarly, our client Easy Live Auction successfully resisted easyGroup’s High Court claim against it.

There is now repeated authority for the position Hansel Henson has maintained for over 20 years – that nobody can have a monopoly in the plain word “easy” in relation to all types of goods and services. 

Background

The applicant, the Support Group (UK) Limited, trades as Easyfundraising, a well-established platform which has raised very substantial sums for good causes through everyday online shopping by UK consumers.  easyGroup has previously failed, both in the UK High Court and Court of Appeal, to force the Support Group to rebrand.

Whilst European readers will be familiar with easyJet, the very famous European airline, many will be unaware that the airline’s founder Sir Stelios Haji-Ioannou has sought to claim a monopoly over the use in commerce of the word EASY through registrations made by his company easyGroup.  As a result hundreds of businesses have received cease and desist letters from easyGroup and in recent years significant English court resources have been used up by easyGroup bringing High Court claims with mixed but generally unsuccessful outcomes.

The mark EASY had originally been filed by easyGroup as an EU trade mark in June 2000, with the application not being accepted by the EUIPO until 2006 (there is a whole backstory here that we won’t get into here).  Post Brexit it became a cloned UK registration.

The registration covered a wide range of services, including business services, transport and hotel services.

Basic requirements for registrability

At a high level, a sign must meet two key requirements to function as a trade mark:

• It must be distinctive, meaning it can indicate commercial origin and distinguish one undertaking’s goods or services from those of others.
• It must not be descriptive, meaning it should not consist exclusively of words that describe characteristics of the goods or services, such as their quality, purpose or ease of use.

These requirements reflect a broader public interest. Ordinary language should remain available for all traders to use.

Why easyGroup completely failed

The UKIPO found that the word EASY does not meet these requirements in relation to the services in question.

The starting point was the ordinary meaning of the word. “Easy” is a common English adjective. In the context of services such as travel, business services or hotel services, it naturally conveys messages such as “simple”, “accessible”, or “straightforward to use”.

The hearing officer accepted that this meaning would be immediately understood by the average consumer. As a result:

• The word is descriptive, because it designates a characteristic of the services.
• It lacks inherent distinctive character, because consumers would not perceive it as indicating origin.

The proprietor sought to rely on acquired distinctiveness, but this failed for a separate and decisive reason. The UKIPO found that there had been no genuine use of the mark EASY on its own.

Failure to show genuine use

This aspect of the decision is likely to have wider significance.

easyGroup’s core case was that its allegedly extensive use of brands such as easyJet, easyHotel, and other “easy + descriptive word” marks amounted to use of EASY on its own.

The UKIPO rejected that argument.

The key reasoning was as follows:

• Use must be assessed for the mark as registered. A family of marks is not a substitute for use of the individual mark.
• The addition of a second, descriptive word (for example “Jet” or “Hotel”) creates a different sign with a different overall distinctive character.
• In the case of “easy” brands, the distinctiveness lies in the combination of elements, not in the word “easy” alone.
• The only use of “easy” on its own was as part of a website acting as a portal for the wider brand family. That was not use in relation to goods or services.

On that basis, the UKIPO concluded that there had been no genuine commercial use of EASY as a trade mark for any of the registered services.

The result was revocation with effect from 14 July 2011.

Why the evidence mattered

An interesting feature of the case is that aspects of Sir Stelios Haji-Ioannou’s own witness statement evidence were very helpful to the applicant’s case! 

His evidence explained, in detail, the business model behind the “easy” brand family. In particular:

• The consistent use of “easy” as a prefix, followed by a descriptive second word.
• The deliberate strategy of building a family of brands using that structure.
• The importance of the overall presentation and get-up, rather than the word “easy” alone.

While intended to demonstrate brand strength, this evidence reinforced a key legal point. It showed that “easy” does not function independently as a trade mark, but only as part of a composite expression. That made it more difficult to argue that EASY alone had been used, or that it had acquired distinctiveness.

Invalidity ab initio

The UKIPO also held that the mark was invalid from the very outset.

This follows logically from the findings above. If a sign is descriptive and non-distinctive, and has found not to have been used then any argument that the trade mark has acquired distinctiveness must fail.  c

The effect of invalidity is retrospective. The registration is treated as though it never existed.

Conclusion

This is a clear and structured decision applying established principles:

• Common words that describe the goods and services to which they are applied will not act as trade marks without substantial evidence of acquired distinctiveness.
• A family of marks does not replace the need to use the mark registered.
• Evidence must show that the mark itself, in the form registered, has been used to designate origin.

For brand owners, the case is a useful reminder that:

• Registration strategies should be aligned with actual use.
• Seeking to build a brand around highly descriptive/non-distinctive words is inherently risky.
• Long-standing registrations can still be vulnerable if they are not properly used.
• Whether for Court or the UKIPO, submitting carefully thought out and well prepared evidence is important. 

Hansel Henson was pleased to act for its long standing client the Support Group in securing this outcome, which we hope will be of assistance to a great many UK businesses.  For a wider commentary on easyGroup’s history of seeking to maintain a monopoly over the word easy, see https://www.hanselhenson.com/sitemap/easyDisputes