Premier Inn can Rest Easy for now as easyGroup's infringement action is dismissed

Background

Premier Inn adopted "Rest Easy" as part of a larger rebrand in 2021. It used the phrase as part of its moon and stars device (Premier Inn Device) in advertising campaigns (physical and online) as well as in plain text on its website, in emails and other marketing materials. It gave evidence that the choice of wording was intended to build on Premier Inn's existing reputation and to "reflect peace of mind that guests get from staying at a Premier Inn hotel" following the COVID-19 pandemic. The pandemic had a particularly heavy impact on the hospitality industry; as a result, several businesses revamped and tailored their marketing strategies to the events of the time, including easyGroup which adopted the tag line "Stay easy, Stay safe" for its easyHotel properties during the same period.

easyGroup claimed that Premier Inn's use and registration of "Rest Easy", even when used or registered with other strong brand identifiers as in the Premier Inn UKTM (see below), was infringing.

The Claims

easyGroup initially claimed infringement of its "EASYHOTEL" and stylised "easy" trade marks under s10(3) Trade Marks Act 1994 (TMA) in September 2023.

easyGroup acquired the "REST EASY APARTMENTS" trade mark in January 2024 as part of a settlement in a separate claim brought by it against the former owner of that mark. It subsequently added a claim for infringement of this mark under s10(2) TMA in March 2024.  

This approach interestingly mirrors easyGroup's approach in its recent case against Easy Live (Services), where it also amended its claim to include a right acquired in a settlement post-issue (see here for our blogs on that case: No easy victory for easyGroup in second trade mark action against Easy Live (Services) and Court of Appeal "easily" reconciles High Court's contradictory outcomes on permissible variants and partial revocation).  

The final claim therefore consisted of the following:

easyGroup also filed an invalidity action against the Premier Inn UKTM under ss 5(2) and 5(3) TMA.

Finally, Premier Inn counterclaimed for invalidity of the EASYHOTEL and EASY Device UKTMs on the basis they were not valid series marks.  Ultimately Premier Inn did not pursue this counterclaim following failed arguments on similar grounds in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation, but reserved its right to present that argument in any appeal.

The Decision

Despite, or perhaps because of, not being an IP specialist, Deputy High Court Judge Lance Ashworth KC went into great detail on the law in his decision.  He ultimately rejected the claims on all grounds.

1. The 10(2) Infringement Claim - REST EASY APARTMENTS UKTM v Rest Easy/Premier Inn Device

S10(2) TMA provides that a trade mark is infringed if someone uses a sign that is the same as or similar to the registered trade mark, for the same or similar goods or services, and this creates a likelihood of confusion among the relevant public (including people thinking the two businesses are economically linked).

The judge referred to the frequently cited summary of Arnold LJ in easyGroup v Nuclei ([2023] EWCA Civ 1247 at paragraph 74) setting out the six conditions which must be satisfied in order to show infringement under s10(2) TMA. Of those conditions, four were in issue: 

Was use in the course of trade?

The judge agreed with the Defendant that "rest easy" was an ordinary English phrase and therefore only qualified as "use in the course of trade" when used as part of the locked up Premier Inn Device.   Use of the words on their own did not amount to use in a trade mark sense, i.e. in the course of trade as a badge of origin.  His assessment on likelihood of confusion was therefore based on Premier Inn's use of "Rest easy" when used in this form, i.e. as the Premier Inn Device.

Were the mark and the sign similar?

As to distinctiveness of the REST EASY APARTMENTS UKTM,  contrary to easyGroup's argument that the distinctiveness was to be found in the words "Rest Easy", the court found that such distinctiveness as there was in the mark actually derived from the combination of the three words together.  The inclusion of "APARTMENTS" in the mark added a degree of distinctiveness to the common phrase "REST EASY".  However, this did not make the mark any more than minimally distinctive.

Given the only common element between the REST EASY APARTMENTS UKTM and the Premier Inn Device was both parties' use of a common English phrase, in which there was no distinctiveness and which would not be seen as a dominant element of the Premier Inn Device, the level of similarity between the two was held to be low.  

Were the goods and services similar?

The REST EASY APARTMENTS UKTM was registered for “Accommodation bureau services [apartments]; Letting of apartments; Management of apartments; Rental of apartments”.  Premier Inn's use had been in respect of "hotel services".  The judge considered the factors to take into account when assessing similarity of goods and services set out in Canon v MGM as applied in later cases and concluded that there was no similarity between "Accommodation bureau services [apartments]" or "Management of apartments" and "hotel services".  There was a medium degree of similarity between "Letting of apartments; … Rental of apartments" and "hotel services".

Was there a likelihood of confusion?

Undertaking a global assessment in the light of the above factors and considering particularly the weak distinctiveness of the Claimant's mark, the lack of independent distinctive character of the words "rest easy", the low similarity of the REST EASY APARTMENTS UKTM and the Premier Inn Device, the medium similarity of the services and the lack of evidence of actual confusion (despite four years of use), the judge held that average consumer would not be confused into thinking the services came from the same or linked undertakings.  The judge had also considered (and dismissed) whether there was 'wrong way round' confusion as argued for by easyGroup, i.e. that people seeing Rest Easy Apartments would think they were from the Premier Inn stable.

As there was no likelihood of confusion, the claim under s10(2) TMA failed.

2. The 10(3) Reputation Claim - EASYHOTEL / EASY Device UKTMs v Premier Inn Device

S10(3) TMA provides that infringement occurs where a mark with a UK reputation is used on any goods or services, and that use without due cause takes unfair advantage of or harms the distinctive character or reputation of the mark. easyGroup claimed both unfair advantage and detriment to the distinctive character of its EASYHOTEL and EASY UKTMs. Both were rejected.

The judge referred to the nine conditions required for infringement of this section set out by Arnold LJ in Lidl v Tesco ([2024] EWCA Civ 262 at paragraph 13), and considered the following conditions in detail:

Did the EASYHOTEL and/or EASY UKTMs have a reputation?

The judge considered the marks separately, noting that "[r]eputation means knowledge of the goods and services, not their repute amongst those who do know them".  Reputation is not the same as distinctive character, which is "the ability of a mark to distinguish itself from other signs and to operate as a badge of origin …  a factor to take into account if a party seeks to rely on it, as easyGroup did in this case".

Premier Inn conceded that the EASYHOTEL UKTM had a reputation for "providing hotel accommodation", which the judge agreed with and extended to "temporary accommodation", but easyGroup was required to prove it had a reputation for the other services it was registered for as well as all services for which the EASY Device UKTM was registered, and to prove it had enhanced distinctiveness in both marks. 

Based on evidence of turnover, UK presence and advertising campaigns, the EASYHOTEL UKTM had no reputation for hotel reservation services.  Enhanced distinctiveness arises from use, and almost all use of the mark had been in a stylised form; this elevated the level of distinctive character of the mark as registered from low to medium.

As for the EASY Device UKTM, any inherent distinctiveness in that mark must come from its non-word elements, as the ordinary English word "EASY" was descriptive of services that are easy to use (and it was used to mean that here). 

easyGroup argued that it had used the EASY Device UKTM on its own which had given it reputation and enhanced distinctiveness, but the judge found the evidence did not support that.  easyGroup had succeeded in the difficult task of getting survey evidence admitted, but it did not assist it as that evidence was weak; most respondents associated the mark with easyJet's aviation-related services and not with hotel services. 

easyGroup further argued that the EASY Device UKTM had been used as part of its EASYHOTEL UKTM and its EASYJET UKTM.  Those marks were registered as words only and therefore covered use in any form. It was argued that both of those marks were used in the same stylisation as the EASY Device UKTM.  The judge was willing to accept that it would be possible for that mark to have acquired distinctiveness via use in the EASYJET and/or EASYHOTEL marks.  However, there was no evidence of use of EASYJET for the relevant hotel services, and there was very little recognition of the EASYHOTEL brand in the survey.

easyGroup's final argument on reputation and enhanced distinctiveness was on the "family of marks" principle, whereby the marks benefit from being part of the "easy Travel Family".  The judge gave this short shrift.  At an earlier stage in the proceedings, easyGroup had disavowed reliance on the family of marks principle.  However, it kept raising arguments which appeared to be based on the principle, even while maintaining that it was not doing so, and it was not entitled to do so.  In any event, a family of marks argument would not assist easyGroup here as there was no evidence that any of the "family" had a reputation in the relevant services.

Accordingly, the EASY Device UKTM did not have the requisite reputation or enhanced distinctiveness needed to establish infringement under s10(3) TMA.  The EASYHOTEL mark did have a reputation and moderate enhanced distinctiveness, for hotel accommodation and temporary accommodation.

Was the Premier Inn Device similar or identical to the EASYHOTEL and/or EASY Device UKTMs?  If so was there a "link"?

Although the judge had found insufficient reputation/enhanced distinctiveness for the EASY Device UKTM, he did consider both marks here in case that was wrong. The word "easy" was held not to be the distinctive and dominant component of the marks; the "easy" in EASYHOTEL was descriptive and as had already been held, any distinctiveness in the EASY Device UKTM was in its stylisation.  There was therefore a low level of similarity between easyGroup's UKTMs and the Premier Inn Device. 

That low level of similarity could have been enough to satisfy the requirement for a link in the mind of the average consumer between the sign and the trade mark which is one of the conditions for infringement under s10(3) TMA.  However, neither the evidence nor consideration of any other factors persuaded the judge that such a link would be made in this case.

Was there detriment to distinctive character or unfair advantage?

The judge considered this in case his previous findings were wrong and found neither detriment nor unfair advantage.   

There was no dilution of the EASY mark.  Even if it could be said that easyGroup had exclusivity for EASY in the hotels sphere – which was doubtful – use of REST EASY did not dilute that; they did not mean the same thing, and easyGroup was trying "illegitimately to prevent such competition".

There was no other detriment.  easyGroup had not shown any evidence of a change in the economic behaviour of the average consumer of the services.  To the contrary, the evidence showed "very substantial increases in revenue" which certainly did not show detrimental change.

There was also no unfair advantage. Intention to deceive is not necessary but the fact there was no evidence of an intention to take advantage of easyGroup's marks combined with the lack of evidence that Premier Inn believed there was even a risk here, let alone that it had decided either to design around the risk or to proceed recklessly, meant that easyGroup had failed to establish unfair advantage. 

3. Invalidity action against the Premier Inn UKTM

easyGroup had accepted that its invalidity case under ss5(2) and 5(3) TMA stood or fell with its infringement case, and it followed the invalidity case also failed.

Comment

It will not be a surprise to anyone following easyGroup's prolific trade mark litigation that Sir Stelios Haji-Ioannou, the founder of easyJet and chair of easyGroup, indicated very quickly in a strongly worded article on the easy.com website that easyGroup would appeal this decision. 

Not only does the decision highlight the limitations on protection of common English words but, particularly for a family of trade marks, the importance of building a reputation for the goods and services that each sub-brand represents; reputation will not carry over to different goods and services. Of course, the family of marks issue was not permissibly argued here; it will be interesting to see if that point is raised if the appeal is permitted.