IP analysis: Given that the ‘average consumer’ is a legal construct, and ‘honest use in industrial and commercial matters’ as well as ‘honest concurrent use’ are considered objectively, it is questionable whether actual witnesses are going to be of any real assistance to the court in deciding these matters. This case provides a timely reminder regarding whether ‘real people’ are to be involved in cases of trade mark infringement andpassing off, in the UK, and if they are, the basis upon which the evidence can be used.
On an interim application by the defendant to adduce such evidence the judge considered there was still likely to be some evidential benefit, because it was the defendant not the claimant, seeking to rely on it. This was all the more so because passing off was also involved.
Also in issue was whether an existing own name defence plea (raising the honest use test) already meant that the ‘honest concurrent use’ point was part of the trial. Accordingly, should an amendment be allowed to make if clearer it was included, rather than risk that it was not?
Written by Paul A. Harris, Head of Litigation at Dehns.
EasyGroup Ltd v Easylife Group Ltd (formerly Easylife Group Ltd) and another [2021] EWHC 1705 (Ch)
What are the practical implications of this case?
There are two important aspects that arise out of this decision—the selection and use of consumers in trade mark infringement and passing off cases, and whether an amendment relating to honest concurrent user should be allowed.
The Whitford Guidelines concerning ‘consumer surveys’ and ‘witness gathering programmes’ and their subsequent analysis and enforcement in cases such as Marks & Spencer plc v Interflora Inc [2012] EWCA Civ 1501 and W3 Ltd v EasyGroup Ltd [2018] EWHC 7 (Ch) have long been the bane of many a claimant’s evidential case. However, in this case, it was the defendant and its lawyers who sought to rely on consumers identified by the claimant, and to take evidence from them for
the case, that was the reason the issue was raised.
While allowing the evidence in, the implications and risk for the defendant were clearly spelled out by the judge.
For the amendment issue, the judge identified there was uncertainty as to whether ‘honest concurrent use’ was a separate defence, or merely part of the ‘global assessment’ carried out in respect of likelihood of confusion. In allowing the amendment, it highlights that this area of law is still to be finally determined.
What was the background?
The claimant, EasyGroup owns a considerable number of ‘easy’ brands, which they either operate under or license out. The defendant sold household goods through a catalogue, which was also available online. They used ‘Easylife Group’ and ‘Easylife’. They also used: ‘easyclean’, ‘easycare’and ‘easygreen’ for cleaning preparations and lawn treatment products respectively.
The claimants (who are known for fiercely defending their ‘family’ of ‘easy’ marks) brought proceedings under section 10(2) of the Trade Marks Act 1994 (TMA 1994) (likelihood of confusion) and TMA 1994, s 10(3) (taking unfair advantage and/or detrimental to the distinctive character or repute of the marks in issue). As well as counterclaiming for invalidity for some of the claimant’s marks, there was also an ‘own name’ defence based on how long the defendant had been operating under its various marks.
The first application dealt with in the present judgment was a strike out one seeking to exclude the defendant’s evidence of six witnesses on the basis that: there were leading questions put;and, the Whitford Guidelines, which determines the use of such evidence, had not been followed.
The second application was the defendant’s one to amend its defence to include the plea of honest concurrent user.
What did the court decide?
The judge carefully went through the Whitford Guidelines and the cases already referred to above, and reached the conclusion that the evidence (as it stood) should be admitted. This was primarily based on the fact that: (a) the evidence was in relation to passing off, and not just trade mark infringement; and (b) it was the defendant relying on it and not the claimant. It is odd, therefore, that the claimant’s counsel did not refer the judge to the decisions in Fage UK Ltd and anor v Chobani UK Ltd and anor [2013] EWHC 298 (Ch) and [2013] EWHC 630 (Ch) on the appropriateness or otherwise of such evidence being relied on by a defendant and whether different considerations applied.
In allowing the amendment to the defendant’s pleading to refer specifically to the defence of honest concurrent use, the judge seems to have been especially influenced by a particular passage of Arnold J’s in the W3 case referred to above. The judge made the point (‘at the outset’ of his consideration whether to allow the amendment), that Arnold J (as he then was) regarded honest concurrent use as ‘probably a factor to be taken into account as part of a global assessment’ in a ‘likelihood of confusion’ case, but he (Arnold J) did not have to reach a conclusion on that point. Without the approach being clear, any uncertainty, potentially, could have taken away a defence the defendant might otherwise have had available to it. Therefore, the judge decided to allow the trial judge to consider how this matter should be approached under English law and so did not rule out the possibility it could be a stand-alone defence.
Case details
• Court: Chancery Division
• Judge: Hugh Sims QC (sitting as a Deputy Judge of the High Court)
• Date of judgment: 11 June 2021
This article was first published by Lexis®PSL on 13 July 2021
