A cautionary tale on trade mark enforcement and non-use

A recent decision highlights the risks of enforcing trade marks without evidence of use. easyGroup’s claim failed despite a finding of a likelihood of confusion

The Intellectual Property Enterprise Court (“IPEC”) has dismissed easyGroup’s trade mark infringement claim against Jaybank Leisure Ltd (“Jaybank”). While the court found that Jaybank’s use of the sign “EASIHIRE” for vehicle rental services would have infringed easyGroup’s ‘easyHire’ mark, the claim ultimately failed due to easyGroup’s inability to demonstrate genuine use of the mark it relied upon, within the relevant period. The decision serves as a reminder to brand owners of the importance of maintaining active use of trade marks and retaining evidence to support enforcement.

Background

easyGroup issued trade mark proceedings against Jaybank in relation to its use of the sign EASIHIRE for vehicle rental services. The claim was based on easyGroup’s 2007 stylised series mark, depicted above, and specifically the black and white version of the mark, which was relied on to assert broader protection not limited to any colour scheme. The claim focused on services in class 39, covering the rental and hire of vehicles.

The court found that Jaybank’s use of the sign EASIHIRE did give rise to a likelihood of confusion and would have constituted infringement. However, the claim was ultimately dismissed. Jaybank successfully relied on a non-use defence, demonstrating that easyGroup had not made genuine use of the mark for the relevant services within the required five-year period preceding the claim.

Infringement

Whilst there was no evidence of actual confusion, Jaybank’s use of EASIHIRE was found to have infringed easyGroup’s mark as it created a likelihood of confusion. The court held that the average consumer could believe the services originated from economically linked undertakings.

The signs were considered aurally and conceptually identical. The services were identical or very similar, with only minor visual differences (such as font, capitalisation and the substitution of “i” for “y”), which were not sufficient to avoid confusion. Jaybank’s argument that “easyHire” was purely descriptive was rejected. The sign was held to be sufficiently distinctive to carry trade mark significance, though not strongly so. No counterclaim, of invalidity or otherwise, had been raised.

Non-use defence

Jaybank relied on the non-use defence, which requires a proprietor to show genuine use of the mark relied upon for the relevant goods or services.

easyGroup was required to demonstrate that the trade mark had been put to genuine use, or that there were proper reasons for non-use, in the five-year period preceding 23 April 2024, subject to the proviso that any use within the final three months of that period would be disregarded unless preparations for such use had begun before it became aware that proceedings might be brought. Accordingly, easyGroup was required to prove genuine use of the mark before 23 January 2024.

easyGroup sought to establish genuine use of the mark by relying on two websites. However, the court found that neither demonstrated genuine use of the mark for the relevant services within the required period. One site was launched too late and merely redirected users to another brand’s platform, while the other promoted a franchise model for equipment hire, unrelated to the rental and hire of vehicles (the registered services). As a result, Jaybank’s defence succeeded and the claim was dismissed.

Implications for brand owners

This decision underscores the critical importance of ensuring that trade marks are not only registered but also actively used in connection with the goods or services for which they are protected. The court’s analysis reflects a strict approach to the evidential burden on claimants: it is not sufficient to show use of a mark in a general or tangential sense. The use must be genuine, commercial in nature, and clearly linked to the specific goods or services listed in the registration.

The judgment reinforces that courts will apply the non-use defence rigorously, including the proviso that disregards use in the final three months before proceedings unless preparatory steps were demonstrably underway. This prevents brand owners from attempting to revive dormant marks through last-minute activity.

In terms of practical steps, brand owners should:

• Conduct regular audits of their trade mark portfolios to identify marks at risk of non-use vulnerability.
• Maintain records and evidence of use, including dated marketing materials, website/social media screenshots, sales data, and evidence of customer engagement.
• Ensure that any use of the mark is clearly attributable to them or an authorised licensee, and that such use relates directly to the goods or services covered by the registration.
• Avoid relying on umbrella branding strategies where the mark is used only as part of a broader group identity or to promote unrelated services.

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

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