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Come Fly with me: Online activity in trade mark oppositions

Date: 9 May 2019

A recent case before the High Court has confirmed the relevant principles applied to determine whether a trader’s online activity is targeted at the UK and highlighted the need to exercise caution when flying after a potential infringer (easyGroup v Easy Fly [2018] EWHC 3155 (Ch)).

 

Easy Fly is a small cargo airline headquartered in Bangladesh that offers and provides airline cargo services under the signs EasyFly and the logo shown below (“the EasyFly signs”):

 

easyfly_359

easyGroup, a vehicle of the well-known entrepreneur and budget airline founder Sir Stelios Haji-Ioannou, alleged that use of the EasyFly signs infringed a number of its registered trade marks (particularly its EASYJET word mark and logos shown below) and amounted to passing off:

 

easyjet_244

easlyflights_212

 

easyGroup sought permission to serve the claim on the defendants in Bangladesh. EasyFly applied for an order that either the court had no jurisdiction to hear the claim or that it should not exercise any jurisdiction that it might have.

 

Given that EasyFly’s company was established in Bangladesh, the Court had to apply three basic criteria to decide whether or not to grant permission to serve out of the UK’s jurisdiction. According to settled case law, the claimant must satisfy the court that:

 

  1. there is a real, as opposed to a fanciful, prospect of success on the claim;
  2. there is a good arguable case that the claim against the foreign defendant falls within one or more of the classes of case for which leave to serve out of the jurisdiction may be given (often referred to as “the gateways”); and
  3. in all the circumstances, England is clearly or distinctly the appropriate forum for the trial of the dispute.

 

The judge held that easyGroup did not have a real prospect of success against EasyFly because the acts were not targeted at the UK or elsewhere in the EU.

 

It did not help the claimants that the bulk of Easy Fly’s business was transporting live shrimp fry within Bangladesh, and its customers were predominantly Bangladeshi companies. It had never had a customer from anywhere in Europe; in fact, Easy Fly’s business came primarily from direct marketing activities or through freight forwarders in Bangladesh.

 

easyGroup’s case on targeting was based on two pages of Easy Fly’s website, on Easy Fly’s Facebook page and on a recent Google search.
The judge was not impressed with easyGroup’s reliance on the fact that Easy Fly’s website and Facebook page were in English: the language was widely spoken in Bangladesh, particularly in business, and was also the dominant language used on websites globally. Moreover, Easy Fly’s website and social media contained no UK or EU contact details.

 

The first page of EasyFly’s website relied on by easyGroup included the following statement:

 

“Our network provides a global reach for customers in Africa, Europe, North America, South America, the Middle East, South East Asia and North Asia.”

 

However, the judge took the view that this statement would be perceived by the average consumer of airline cargo services as an advertising puff. It was quite plain from EasyFly’s website that it did not have anything remotely resembling a global reach. Even taken entirely at face value, this statement amounted to a claim that Easy Fly served the whole world, which did not amount to targeting Europe, still less the UK.

 

The second page of EasyFly’s website relied on by easyGroup included the following statements (which also appeared on EasyFly’s Facebook page):

 

  1. “..While we moved on with our domestic operations, we foresee greater business opportunities lying ahead in the international air-cargo market as well. Initial market research shows an appreciable tonnage of cargo movements between Bangladesh and China, Middle-east, Europe & in the USA region.”
  2. “To extend cargo network initially to  the Chinese cities, middle-east, we are particularly working to acquire appropriate aircrafts at earliest.”

 

According to the judge, “the average consumer would perceive the first statement as merely identifying potential future opportunities” and, when read together with the second statement, “he or she would conclude that at present Easy Fly was only targeting China and the Middle East (and even that was work in progress)”.

 

The Google search relied on by easyGroup showed that a search for “cargo flight Bangladesh” yielded Easy Fly’s website as the second hit. However - since the search result was headed “Easy Fly Express – first & only cargo service in Bangladesh” - there was nothing to suggest that the service was targeted at Europe.

 

Although the judge accepted that the resemblance between the EasyFly signs and easyGroup’s trade marks and get-up was a factor to be taken into consideration, he did not accept that it was sufficient to lead the average UK or EU consumer to believe that EasyFly’s website or Facebook page was aimed at him or her.

 

Comment
In this age of worldwide internet access, a reoccurring question for trade mark owners is: what exactly constitutes use for the purposes of online trade mark infringement? This decision has confirmed that a company or individual based outside of the UK that uses a trade mark online will not be deemed to have used that mark for the purposes of bringing infringement proceedings within the UK, unless the claimant can demonstrate that the alleged infringer has specifically targeted UK consumers.

 

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