EasyGroup Decision Reconsiders Law On Consumer Evidence In Trade Mark Cases

• Published date: 28 July 2021
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Dehns
• Author: Mr Paul Harris

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...