Out-Law / Your Daily Need-To-Know
EasyGroup, parent of easyJet, easyMobile, easyCruise and many other 'easy' brands, has won a trade mark for easy.com, despite objections that the term was devoid of any distinctive character and therefore ineligible for registration.
Easynet, a large ISP that has no relationship with Stelios Haji-Ioannou's easy empire, objected to the application. Easynet said the proposed mark consisted entirely of the elements easy and .com, neither of which are distinctive and both of which are in common use.
In response, easyGroup argued that it had been the owner of and had traded from the domain name easy.com since November 2000. In its opinion no other trader would legitimately want to trade as easy.com and there was a clear difference between the trade mark and the elements that made it up.
It claimed a brand identity had built up over the years in respect of the word easy followed by a word or words relating to the service offered by the firm.
According to Hearing Officer David Landau, in determining a trade mark application it is often necessary to analyse the individual elements of a trade mark, but once that analysis is made then the overall impression must be taken into account. In this case the whole mark was found to be distinctive.
When looked at as a whole, said Landau, there was no need to leave the words easy.com for others to use.
“The granting of rights in easy.com is not the granting of rights in easy,” he said.
Lee Curtis, a trade mark attorney with Pinsent Masons, the law firm behind OUT-LAW.COM, expressed surprise at the ruling. He pointed out that the application was made in October 2000, one month before the company started using easy.com. "The easy.com brand might be established today, but the decision should have considered the brand's recognition as at October 2000. EasyJet was known at that time, but easy.com had not been used."
Although the Hearing Officer said the rights were given to easy.com and not easy, Curtis said a court would not necessarily see it the same way. "A court would surely find easy and easy.com similar. So if someone uses the word easy in the same field as Stelios, easyGroup has just won a powerful weapon to stop them."
Curtis considered it unlikely that a court would bother to analyse the Hearing Officer's decision in the event of such a dispute. "Instead, it will focus on the simple fact that easyGroup has a trade mark for easy.com," he said. "So easyGroup has been very fortunate here."
