Court of Appeal "easily" reconciles High Court's contradictory outcomes on permissible variants and partial revocation

• easyGroup Limited v Easy Live (Services) Limited [2025] EWCA Civ 946 ("Easy Live"), and
• easyGroup Limited v Easyfundraising Limited [2025] EWCA Civ 947 ("Easyfundraising").

Lord Justice Arnold, giving judgment for the Court of Appeal, harmonised conflicting first instance outcomes and explored three key points of trade mark law, namely:

1. Permissible variants for evidencing genuine use under section 46(2) Trade Marks Act 1994 ("TMA");
2. How to define appropriate subcategories within the context of alleged non-use of a trade mark across the full scope of its specification in accordance with section 46(1)(b) TMA; and
3. Likelihood of confusion.

Decisions

These appeals followed decisions by Caddick KC and Fancourt J, which were both handed down in September 2024 and reached inconsistent outcomes on largely similar facts, including whether easyGroup's use of marks similar but not identical to its registered mark counted as "permissible variants" so as to prove use of that mark, and allegations of infringement of easyGroup's "easylife" marks. Each case also involved similar counterclaims for partial revocation of easyGroup's marks on substantially similar grounds. Permission to appeal was granted in large part due to the inconsistent outcomes reached in these cases. For background on the Easy Live first instance decision, see our earlier blog post: Court of Appeal rules that easyGroup suffered damage in Easy Live Auction dispute | Fieldfisher.

While easyGroup obtained a favourable infringement ruling against Easy Live's use of its eponymous sign, the Court of Appeal otherwise favoured Easy Live's and Easyfundraising's arguments that there was insufficient likelihood of confusion for any further infringement findings against the Defendants. In doing so, the Court of Appeal found that given the extensive real-world use and consumer familiarity in a crowded retail market, the average consumer was able to distinguish between the enterprises.

1. Legal test for permissible variants: the two-stage test

A central issue to both appeals was whether easyGroup's use of modified versions of its "easylife" marks amounted to genuine use under section 46(2) TMA. The marks as registered (together referred to as the "easylife Marks") by easyGroup were:

In practice, easyGroup accepted that it had not used the easylife Stylised Mark strictly as registered within the relevant period, but argued that use could be demonstrated for this mark via five variants (the "easylife Variants"), three of which were figurative (the "Figurative Variants"), set out below:

Section 46(2) TMA sets out that "use of a trade mark includes use in a form (the ‘variant form’) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered" and is intended to permit brands to maintain flexibility to adapt their marks for marketing and promotional purposes, while ensuring marks continue to preserve their origin-indicating function. It was this proviso on which the first instance judges had taken contradictory views.

In the Easy Live first instance decision, Caddick KC found that changes such as the dot over the letter "i" in place of the triangular tick device, using different shades, the addition of a tick in a circle, and a different font did not affect the mark's distinctive character. In that decision, it was held that the dominance of the word "easylife" and the continued presence of the "tick" in both the easylife Stylised Mark and the Figurative Variants was considered more conceptually important than its altered shape, colour, and position. Differences to the font colour, amendments to the strapline (or its omission altogether), and removal of all figurative elements were not considered to have any significant impact on the distinctive character of the mark (even if these changes had been an intentional and considered marketing decision) due to the dominance and continuity of the "easylife" word across the easylife Variants.

By contrast, in the Easyfundraising first instance decision, Fancourt J fundamentally disagreed with Caddick KC's conclusion (which had been handed down the week before and which Fancourt J proactively considered). Instead, he believed that each of the Figurative Variants created a different overall impression due to the "omission of the triangle/pyramid….and the inclusion of the tickball" alongside amendments to the font and strapline, with the tickball itself considered a "strong and distinctive element" of the Figurative Variants. Therefore, as Fancourt J placed greater weight on the impact of the original design elements on the average consumer, this led to a finding that the easylife Variants which significantly altered or omitted these visual elements were not minor variations and could not be relied upon to show use of the mark as registered.

Arnold LJ's analysis of this issue emphasised that businesses require leeway when assessing genuine use and what is permitted as a variant form of a mark to ensure businesses can evolve their branding to reflect changing marketing and promotional needs. He reaffirmed the applicable two-stage test:

1. 1. Appraise the differences between the mark as registered and the version(s) used, and
2. 2. Assess whether those differences affect the mark's distinctive character, considering visual, aural, and conceptual elements from the perspective of the average consumer.

Changes to elements that do not materially contribute to distinctiveness (embracing the inclusion, omission, or amendment of straplines, colours, fonts, or decorative devices) will not undermine genuine use if the element(s) which gave the mark its distinctive character, remain¹.

The Court of Appeal aligned the two decisions, holding that the compound word "easylife" was the dominant and distinctive component of the mark. It followed that even the extensive amendments depicted in the easylife Variants did not alter the distinctive character of the mark when assessed globally from the perspective of the average consumer. Accordingly, genuine use had been established.

In reaching this view, the Court of Appeal preferred the approach of Caddick KC, who had treated alterations to figurative elements (e.g. the tick symbol or stylised font) as immaterial to the mark's distinctive character, over Fancourt J who the court found had erred both legally and logically in placing undue weight on amendments to weakly distinctive visual design aspects to the impression created in the mind of the average consumer.

Notably, given the amount of investment and research which goes into building brand awareness around various conceptual elements of a brand's message, the Court of Appeal held that, in this instance, figurative elements only reinforced the brand message, and that these were less dominant to consumer perception than the consistency of the words themselves, which were considered the more generally distinctive, dominant, and memorable elements of a mark (in part due to their capacity to be articulated aurally). This potentially suggests that the courts perceive deliberate branding changes to be less impactful on consumers than the marketing industry's significant investment preceding any branding changes would suggest.

Note that Arnold LJ added in both cases (at paragraph 71 in Easyfundraising and paragraph 77 in Easy Live) "that there is an alternative and preferable route to the conclusion which the judge reached with respect to Signs 1-3. Given that the tick in the mark as registered takes the place of the tittle (the dot of the “i”), and that it was found by the judge merely to reinforce the concept of “easylife” in the average consumer’s perception of the mark, it would easily be forgotten by the average consumer. Although the case was argued before the judge on the footing that Sign 1 was a single sign, the better view is that it consists of two signs side-by-side: the tickball on the left and “easylife lifestyle solutions” on the right. If the mark as registered is compared with the righthand sign, then it is plain in my view that the differences do not alter the distinctive character of the former. The fact that the tickball sign is used together with that sign does not affect this. (It would be different if use of the mark as registered, or a variant thereof, as part of a composite sign or in conjunction with another sign affected the perception of the average consumer of the mark as registered, or variant, as an indication of origin …). The change to, and omission of, the strapline in Signs 2 and 3 do not make any difference". This approach did not decide the point, but it will be interesting to see if future cases raise it.

Key Takeaways: Permissible Variants 

1. The scope for brands utilising adapted variants to evidence genuine use of their marks is broad, such that even significant changes in stylisation, colour, font, straplines, or devices may still count as use of the same mark, so long as the dominant element(s) remain(s).
2. The court's focus is on consumer perception and the brand's subjective rationales for using variants (e.g. marketing strategy) are irrelevant to the legal test.
3. Where the word element is dominant (as with "easylife"), changes to the surrounding figurative presentation are less likely to alter the distinctive character of a mark.
4. It remains to be seen how this point will be interpreted in scenarios where a proprietor seeks to rely on variants of a highly elaborate mark, or situations where a purely figurative mark does not include any word elements to focus consumers' attention.

2. Partial revocation: narrowing the scope of protection

a. Subcategories of goods/services

Under section 46(1)(b) TMA, a registered trade mark may be revoked for non-use over a continuous five-year period. Section 46(5) TMA permits partial revocation where use is proven only for some goods/services, aligning the specification to reflect actual use. In both Easy Live and Easyfundraising, the Defendants counterclaimed for at least partial revocation of the easylife Stylised Mark to avoid identity of goods/services (which would have important implications for any proceeding infringement analysis).

Reaffirming the position in Merck², the Court of Appeal confirmed that the central question for courts when considering whether to exercise their powers of partial revocation is whether the goods/services for which the mark has been used form a distinct subcategory within the broader class, assessed from the average consumer's perspective by reference to the purpose and intended use of the goods/services. Arnold LJ articulated that the court's powers should only be exercised where:

1. the goods/services included in a mark's specification are sufficiently broad to encompass recognisable independent sub-categories, and
2. use in relation to one subcategory would not constitute use in relation to others.

The Court of Appeal emphasised that it would be unrealistic for proprietors to be expected to use their marks across the full breadth of a specification and the law should not unduly restrict the legitimate interests of proprietors in expanding their offerings to the market. Specifications must reflect genuine use without stripping protection for functionally indistinguishable goods/services to those it already offers.

As summarised by Lord Kitchin in Sky Ltd v SkyKick UK Ltd³, the essential criterion to identify coherent subcategories of goods/services capable of being independently viewed is their purpose and intended use.  The Court of Appeal highlighted that assessments must be fair and not arbitrary, based on a mark's purpose and intended use (rather than market segment or audience). This usually means that the average consumer would perceive goods/services to be functionally distinct in the market and capable of being viewed independently.

Having accepted that the variants demonstrated genuine use, the Court of Appeal reassessed the appropriate scope of the specifications, considering whether easyGroup's use of its easylife Marks in connection with printed catalogue inserts (easylife's "Insert Service") justified retaining a specification for "advertising services". Preferring Fancourt J's analysis, Arnold LJ confirmed that the correct approach is not to focus on the delivery method (e.g. printed documents inserted into catalogues), but on whether the services serve a distinct purpose or are used in a materially different way.

The court held that the Insert Service (advertising third party goods) was not materially different from other forms of advertising, with the method of delivery being simply one means of fulfilling that purpose. Accordingly, Easy Live and Easyfundraising's proposals to narrow the specification to "providing advertising space by way of printed inserts into printed retail catalogues" was considered unduly restrictive and was rejected. The Court of Appeal instead decided that a more appropriate subcategory was "providing advertising or promotional space in printed publications", recognising this medium-based distinction was sufficiently distinct. Whilst not determinative for the purpose of revocation, Arnold LJ noted that the Nice Classification system's decision to group advertising by relevant medium (e.g. radio, television and online, although it was noted that it did not specify newspaper and magazine advertising) was a helpful and valid reference point to consider when assessing potentially relevant subcategories.

In the Easyfundraising appeal, easyGroup received some positive outcomes following the court's consideration of its "easyJet" and "easy.com" marks. At first instance, Fancourt J had limited easyJet's specification to "retail services provided to airline passengers". Arnold LJ found this imprecise (e.g. consumers may browse and order goods before boarding a plane or on the ground, and not just whilst in the air). He also determined that there was no justifiable basis for Fancourt J's decision that the goods were "essentially of a gifts character" when people may well be purchasing items for their own use. It was, therefore, held that a fair specification reflecting actual use was for retail services "provided by means of an internet website or on board an aircraft". It remains to be seen if this point is contested further.

 b. Genuine v token/promotional use

Turning to "easy.com", Fancourt J had decided to revoke this mark in its entirety, finding its use (in providing free email addresses) had been purely promotional and, therefore, did not constitute genuine use for electronic mail services. Arnold LJ referred to his reasoning at paragraph 106 of the Court of Appeal's decision in easyGroup v Nuclei⁴, which makes clear that genuine use does not include the situation “where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter".   He reaffirmed that the important question to address is whether "the average consumer would perceive the provision of the item in question to be purely for the purpose of promoting the sale of other goods or services", or whether they would see it as trading in its own right (even if they thought the proprietor might have an ulterior, promotional, motive).

Diverging from Fancourt J's finding, Arnold LJ held that services were less likely to be perceived as being purely promotional than goods and held that recipients would understand they were receiving a free email service which was competitive with others in the marketplace. Furthermore, "users of the email service did not have to engage in any other transaction in order to obtain the email service" and this distinguished the use from other promotional uses where the branded promotional goods/services are only provided to a consumer purchasing something else.

Arnold LJ held that "the acid test is whether the use in question is apt “to create or preserve an outlet for the goods or services that bear” the trade mark" (quoting the CJEU in Silberquelle⁵). He, therefore, concluded that easyGroup's use of its easy.com mark was not purely promotional, and the registration was accordingly reinstated. 

Note that Easyfundraising had argued that easyGroup had not provided sufficiently detailed evidence of use of its email service; it had not given numbers of active easy.com email addresses. However, it had provided evidence of use over the course of 20 years and presented its overall number of users and page views. Although this evidence was not comprehensive, Arnold LJ found it was enough to establish "use which is sufficient to create or preserve a market share for email services under the trade mark bearing in mind the nature of the service and that there is no de minimis rule".

Key Takeaways: Partial Revocation 

1. Brand owners must ensure their marks are used consistently and across the full range of registered services to avoid revocation.
2. The Court of Appeal reaffirmed that, as established in Ferrari⁶, the fact alone that goods are sold at a high price point or to a niche audience is not sufficient in itself for it to be considered an independent subcategory.
3. Genuine (not token) use of a trade mark can be demonstrated even if the provision of goods/services may have been for promotional purposes, providing the use is sufficient to create or preserve a market share for goods or services under the trade mark.   
4. The decisions provide guidance on how to identify subcategories (i.e. by assessing the use and purpose of the goods/services), holding that partial revocation requires more than a difference in delivery method; the services must serve a distinct purpose or be used in a materially different way such that the average consumer would perceive the services as a logically separate category.

3. Diverging analysis of likelihood of confusion

Easy Live

The Court of Appeal accepted that Caddick KC had been entitled to find that, despite moderate similarity between the easylife Mark and "Easy Live" sign (for identical or highly similar services) with evidence of enhanced distinctiveness, the average consumer would not assume a connection or believe that easyGroup had a monopoly over the word "easy". It was recognised that the term "easy life" may be used in common parlance and was conceptually different to the provision of services in an easy and live (i.e. occurring in real time) manner. The "easy" prefix was recognised as weakly distinctive, requiring stronger contextual links or enhanced distinctive character to support infringement claims. However, easyGroup was able to establish enhanced distinctiveness in its mark through its extensive use in business (in variant forms) since 2000.

Arnold LJ was also concerned that, without additional context about what services were being described as easy and live (which was not an issue for the Easy Live (Services) and Easy Live Auction signs), consumers were more likely to misunderstand the '"Easy Live" sign as being conceptually similar to "easylife". Departing from Caddick KC's reasoning, the Court of Appeal found that, when the Easy Live sign appeared without the word 'auction' or 'services', the average consumer was less likely to interpret 'Live' as an adjective and might be inclined to perceive it as a verb.

The Court of Appeal also accepted that, whilst typos may not prove actual confusion, they may demonstrate the ease with which such errors can occur, leading the marks to be confusingly similar in practice. This potential linguistic ambiguity led Arnold LJ to conclude that, if a significant number of consumers would (incorrectly) interpret 'Live' as a verb, then there was a likelihood of confusion, contributing to a finding of infringement in respect of both easylife Marks.

Accordingly, while the Court of Appeal agreed with Caddick KC that the Easy Live (Services) and Easy Live Auction signs were not infringing, it found the first instance judgment erred on conceptual similarity and the weight given to confusion evidence. Arnold LJ therefore found that there had been infringement of both the easylife Word and Stylised Marks.

It is notable that the Court of Appeal commented that "plenty of trade marks are ungrammatical" when conducting its confusion analysis. This approach is interesting. While the courts have long recognised that consumer attentiveness varies across products and sectors, the notion that grammatical misinterpretation may lead some consumers to be confused, influencing the average consumer's perception, is novel. This interpretation arguably sits in some tension with the legal construct of the average consumer, traditionally understood to be reasonably well-informed, observant, and circumspect, and appears to sit uneasily with Arnold LJ's own observation in Lidl v Tesco⁷ that ill-informed or careless consumers should be excluded from consideration, with infringement requiring more than potential confusion by the least attentive consumer or the "moron in a hurry"⁸.

Easyfundraising

By contrast, the Court of Appeal held that Easyfundraising's sign did not infringe the easylife Marks. There were sufficient conceptual and visual differences to avoid the average consumer being confused. Since 2005, Easyfundraising had operated a platform enabling members of the public (referred to as "supporters") to access various third-party online retailers, generating commission. Of this commission, 50% was distributed to charities or good causes, resulting in over £50 million donated since inception. In particular, Arnold LJ preferred Easyfundraising's argument that the average consumer would see the fundamental characteristic of Easyfundraising's service as providing a convenient way for supporters to channel money indirectly to good causes, and easyGroup had not provided any compelling reason why confusion would arise.

Although the court corrected aspects of Fancourt J's partial revocation analysis regarding the "easyJet" and "easy.com" marks, it dismissed easyGroup's argument that reinstating these marks should lead to a finding of infringement by Easyfundraising. Instead, Arnold LJ concluded that the difference in services meant there was no likelihood of confusion under section 10(2) TMA.

Comments

While easyGroup has described the Court of Appeal outcome as a "significant victory" on its website⁹, the practical impact on its brand protection strategy remains to be seen. Although enhanced distinctiveness may provide a penumbra of protection extending beyond the specific goods and services for which a mark has been used, the scope of these rights, and what constitutes infringement, will always depend on the facts of each case. The divergent first instance decisions and the Court of Appeal's detailed analysis of each mark and sign highlight that the outcome of future disputes involving easyGroup's marks remains unpredictable.

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Footnotes

1. Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch), 122
2. Merck KGaA v Merck Sharp and Dohme Corp [2017] EWCA Civ 1823, [2018] ETMR 10
3. [2024] UKSC 36, [2025] Bus LR 251; see our brief summary here:  Supreme Court rules in Sky v SkyKick | Fieldfisher
4. easyGroup Ltd v Nuclei Ltd [2023] EWCA Civ, 1247, [2024] FSR 9 Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759
5. Cases C-720/18 and C-721/18 Ferrari SpA v DU [EU:C:2020:854]
6.  Lidl Great Britain Limited v Tesco Stores Limited [2024] EWCA Civ 262 at 16
7. Morning Star Cooperative Society v Express Newspapers Ltd [1979] FSR 113 - moron
8. 'easyGroup success in the Court of Appeal' (easy.com, 24 July 2025) easyGroup success in the Court of Appeal - easy.com, accessed 19 August 2025