February 2009
easyHotel v EASYHOTEL: But no Likelihood of Confusion
This month the easyGroup expanded its easyMonopoly after its Community trade mark easyHotel managed to survive cancellation proceedings at the European Court of First Instance (the CFI).
easyGroup applied for and was granted CTM registration for the word mark easyHotel in Classes 9, 16, 25, 32, 33, 35, 36, 38, 39, 41 and 42 in 2004. After the mark was registered a German company called Commercy AG applied to cancel the registration on the basis of its earlier EASYHOTEL German registration for goods and services in Classes 9 (Computer software for the production of platform-independent internet shops and internet authoring systems chiefly for the reservation, booking and payment of accommodation) and 42 (Development and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation). In response easyGroup agreed to surrender Classes 9 and 38 of its registration and some of the goods and services in Class 42 but decided to fight Commercy AG to uphold the other goods and services covered by its registration in respect of Class 39 (Information services relating to transportation services, including information services provided on-line from a computer database or the internet; travel reservation and travel booking services provided by means of the world wide web) and Class 42 (Computerised hotel reservation services).
The CFI were left to compare the goods and services to decide whether there existed a likelihood of confusion between the marks. It applied the familiar tests of comparing the nature, the intended use and the method of use of the goods and services, and whether the goods and services were in competition or were complimentary. CFI decided that on this analysis the goods and services covered by Commercy AG’s registration were all computer related whereas the goods and services for easyGroup’s mark related to information, booking and reservation services which only used computer technology to support the transmission of information or to make it possible to reserve hotel accommodation or travel. In addition, the CFI found that the relevant goods and services covered by Commercy were used to enable a software system, and, more specifically, an internet shop, to function, whereas the information, booking and reservation services covered by easyGroup’s mark were used to reserve hotel accommodation or travel. Therefore the CFI found that the goods and services concerned were not substitutable, since they were intended for different end users.
Briffa’s Comment
This case shows that even if you have an identical earlier registration you still may not have complete monopoly rights in your mark. Since trade marks are registered in respect of specific goods and services your monopoly will only extend as far as the goods and services covered by your registration, or if you can show a likelihood of confusion in respect of similar goods and services. Therefore it is important from the outset that your trade mark is registered in respect of all the goods and services in your business and each class of good and service has the broadest possible coverage. This is why getting professional advice about trade mark filings could be key to maintaining and enforcing your rights in the future.
For more information contact info@briffa.com