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."
