Easy Group Wins Extensive UK 'Easy' Trade Mark

by Robin Pilgrim, LawAndTax-News.com, London

16 March 2006

EasyGroup has won a UK trade mark for easy.com covering a very wide range of goods and services, despite objections from Easynet Group that the term was devoid of any distinctive character and therefore ineligible for registration.

The trade mark covers:

printed matter and publications; books, manuals, pamphlets, newsletters, brochures, albums, newspapers, magazines and periodicals; tickets, vouchers, coupons and travel documents; documents, tickets and publications, all relating to travel arranged by means of the world-wide web; travel documents folders; travel guide books; travellers cheques; playing cards; identity cards; labels and tags; posters, postcards, stationery, writing instruments, wrapping materials, calendars, diaries, photographs, gift cards and greetings cards; badges; teaching and instructional materials; promotional and advertising material; signs of paper or cardboard;

advertising; business management; business administration; office functions; publicity, promotional services, import-export agency services, business information services, organising exhibitions for commercial or advertising purposes; auctioneering services;

financial and insurance services;

electronic mail services;

transportation of goods, passengers and travellers by air; airport check-in services; arranging of transportation of goods, passengers and travellers by land; bus transport services, car transport services, coach services; airline services; baggage handling services; cargo handling and freight services; operating and providing facilities for tours; cruises, excursions and vacations; chartering of aircraft; rental and hire of vehicles, boats and aircraft; aircraft fuelling services, aircraft parking services; ambulance services; travel agency and tourist office services; advisory and
information services relating to the aforesaid services; information services relating to transportation services, including information services provided on-line from a computer database or the Internet; travel reservation and travel booking services provided by means of the world-wide web;

information relating to entertainment and education, provided on-line from a computer database or the Internet; entertainment services provided on-line from a computer database or the Internet; educational information provided on-line from a computer database or the Internet; rental of electric and electronic goods, clothing, toys, games and playthings;

temporary accommodation; catering, hotel, restaurant, cafe and bar services; reservation services for hotel accommodation; provision of exhibition facilities; meteorological information services; hairdressing, grooming and beauty salon services; security services; airport security services; airline passenger security screening services.

Easynet claimed that the trade mark is devoid of any distinctive character and/or consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value or other characteristics of good and services. It stated that the trade mark consists entirely of the elements easy and .com. Easynet stated that neither of these elements is distinctive, that they are in common use and are elements that other traders may legitimately wish to use in the course of trade.

Easynet claims that easy.com is not distinctive. It stated that signs identical with or similar to easy.com are trade marks that other traders may legitimately wish to use. The .com element designates trade occurring via the Internet. The easy element is a common adjective. The combination easy.com designates the characteristics of an easy to use website or other easy to use Internet services or other trade easily conducted via or in relation to the Internet. Such easy to use website or Internet services or other trade easily conducted via or in relation to the Internet could involve trade in relation to goods and services identical with or similar to all of those for which the trade mark has been applied. parent of easyJet, easyMobile, easyCruise and many other 'easy' brands.

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.

Hearing Officer David Landau dismissed the objections from Easynet. He said that 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. However he said “The granting of rights in easy.com is not the granting of rights in easy”.

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