Can You Really Own a Common Word Like 'EASY'?
Naming is a surprisingly complicated thing to do so I’m not surprised there are so many disputes around names.
Some people believe you need to invent a new word to be able to trademark it – that ordinary dictionary words may not be monopolised by others. So, they make the mistake of using names incorporating a word that’s trademarked by well-known brands, such as BOSS, in the fashion industry. Then they wonder why they’re receiving cease and desist letters.
While BOSS is an ownable word, there are words like ‘EASY’ that are challenging to claim rights over as they’re common terms that many businesses may want to use to describe their offering.
Does EASYGROUP have a monopoly over the word EASY?
To explain this concept of ownability of common words, I often use FRESH PIZZA versus FRESH UMBRELLAS as an example.
If you name your food business FRESH PIZZA, you effectively have no name. The words are too generic to claim rights over because other food sellers might legitimately want to refer to their pizzas as FRESH too. A trademark would limit their right to use such ubiquitous words – hence, why the trademark office does not grant a trademark for FRESH PIZZA to anyone. You could only secure a registration for the words FRESH PIZZA if you included a distinctive logo. However, the resulting registration would effectively protect the logo not the words.
On the other hand FRESH UMBRELLAS would be a perfectly valid trademark because other traders don’t need to refer to their umbrellas as FRESH. Hence the use of the word FRESH in that context is distinctive.
Given the difficulty of claiming rights over common words, why did the EASYGROUP even sue EASYFUNDRAISING recently – a dispute it lost?
The EASYGROUP has acquired a broader scope of protection over the word EASY because they’re rigorous in defending their turf. Also, they have registered many trademarks in diverse industries using the word EASY. For example, apart from EASYJET they have registered EASYBUS, EASYHOTEL, EASYMONEY etc.
Also, the fact that a brand is well-known gives it greater rights in its name than other trademark owners enjoy.
EASYGROUP tend to threaten to oppose others’ trademarks if they include the word EASY. Doing so enables them to prevent numerous businesses from using names incorporating EASY. For example, a Jet Wash firm was forced to change its name from EASYJETWASH, and indie band EASY LIFE also had to rebrand after legal pressure from EASYGROUP.
The effect of this strategy is that many smaller players are intimidated by the prospect of legal costs. They back down if the EASYGROUP write to object to their trademark application. So, without even initiating proceedings EASYGROUP regularly manages to get businesses to withdraw their applications.
As for EASYFUNDRAISING, it had been trading under this name since 2005. In the recent litigation in the High Court EASYGROUP argued that their trademarks were infringed by EASYFUNDRAISING's creation of the EASYFUNDRAISING search tool. Also, it was claimed that EASYFUNDRAISING’s shopping website had a "poor reputation" which negatively impacted the EASY brand.
Mr. Justice Fancourt ruled that EASYFUNDRAISING’s use of EASY did not infringe on EASYGROUP’s trademarks. He found no evidence of customer confusion nor did he think that EASYFUNDRAISING’s use of the name was taking unfair advantage of the EASYGROUP brand. He also disagreed that EASYFUNDRAISING had a poor reputation that tarnished the EASYGROUP brand.
EASYGROUP intends to appeal the decision. Clearly, you need deep pockets to get into a fight with EASYGROUP.
This explains why the company has managed to assert rights over a common word like EASY to the extent that people need to think carefully before incorporating the word into their names. It’s usually necessary to choose more distinctive words if you want to be able to stop competitors sharing a word used in your trademark.
If you’re choosing a new name for your business be sure to engage us early on to support your efforts. The name a business uses is its most valuable intellectual property if the business is a success. Often names may not work from a trademark perspective or may be difficult to enforce or register in other markets. It’s not just about whether a name is available to use. So, my advice is to take account of the legal dimension early on by working with a suitably experienced lawyer.
