easyGroup’s latest “family of marks” strategy against Easyfeetstore rejected

Overview

In another case brought by easyGroup, the Intellectual Property Enterprise Court (IPEC) dismissed all claims brought against Easyfeetstore OÜ (“Easyfeetstore”), for its use of EASYFEET on orthopaedic and orthotic insoles. easyGroup did not have a standalone registration for the word “easy”, and so it relied on a number of composite “easy[something]” marks, including easyJet and easyFood to advance a “family of marks” argument.

Despite having initiated more than 50 similar actions since 2015, easyGroup failed to provide the required evidence to support the argument that the public recognised an “easy” family of marks. Instead, the court held that “easy” lacks inherent distinctiveness, being a descriptive term suggesting ease of use in relation to the relevant goods or services, rather than denoting trade origin to the exclusion of others. 

The decision offers some useful guidance for brand owners, particularly those seeking to enforce a “family” of marks built around a common element. The key point is that simply operating multiple brands with a shared prefix is not enough. Compelling evidence is required to show that consumers perceive the shared element as indicating trade origin.

What was easyGroup’s complaint?

It was common ground that a family of marks sharing common features can increase the likelihood of confusion. Relying on this, easyGroup argued that consumers would perceive any “easy” plus a descriptive term to be part of the easyGroup business. However, the Court rejected this, holding that the only similarity between EASYFEETSTORE and the trade marks relied upon was the word “easy”, which was held to be descriptive and lacking distinctive character in this context. 

Despite easyGroup giving evidence about its family of marks being presented to the public alongside wider branding features (i.e. the use of orange, a particular font, the lower case “e” and upper case proceeding word), those features were not relied upon by easyGroup and the judge pointed out that the absence of all or any of those features in a sign may actively lead to a perception that the sign is in fact not part of the family (although the evidence did not point one way or the other). easyGroup’s argument instead depended on “easy” plus another descriptive word being enough on its own. On the evidence, that was not made out. It followed therefore that there was no similarity between the suffixed words to the trade marks and either “feet” or “feetstore”, to establish a likelihood of confusion. 

Another notable aspect of the court’s analysis was its treatment of real-world confusion evidence. The alleged infringement had been ongoing since 2012 and involved substantial sales. Whilst it is not an essential ingredient, the absence of any actual confusion evidence was treated as significant, particularly given easyGroup’s reputation for frequent and proactive enforcement and consistent with there being no real risk of confusion. 

In relation to easyGroup’s reputation claim, the court emphasised that there must be similarity between the trade mark and the infringing sign, and the public must make that mental link between them. Reputation alone will not suffice where the marks are sufficiently dissimilar.  The judge also emphasised that evidence to support detriment or unfair advantage is key to demonstrating an actual or likely change in economic behaviour. Importantly, where the parties have traded side by side for years, a rights holder cannot simply rely on a bare assertion of likely detriment, it must back this up with the required evidence. Here, no such evidence was provided. 

Key takeaways

The case is a reminder that a “family of marks” argument remains difficult to establish in practice. The courts will not assume that a shared element (particularly a descriptive one) signals a single commercial origin unless there is clear evidence that consumers recognise it as such. 

For rights holders, the focus should therefore be on demonstrating, with evidence, real consumer perception that the common feature functions as a badge of origin. Without that, attempts to extend protection across a broader “family” are unlikely to succeed.

This decision is also a reminder that evidence is, of course, key. Brand owners should think early about what evidence is available to prove confusion, or a link giving rise to detriment/unfair advantage, particularly in cases of longstanding trade. 

For more information or if you have any questions, please contact Emily Roberts or Holly Webb, or your usual IP team contact. 

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