Earlier this month, the “artists-formerly-known-as-Easy Life” played their final gigs under that name, after claiming they were forced to change their name following legal action in the English High Court from easyGroup.

As part of the claim, easyGroup pointed to a tour poster from 2021-2022 produced by the band which has photoshopped the band’s name onto an image of an easyJet aircraft. The font used was similar to the logo used by an easyGroup licensee – easyJet. In doing so, easyGroup claimed that Easy Life had been seeking an ‘unfair advantage’ and to free ride on the reputation of the easyGroup brands. S.10(3) of the Trade Marks Act 1994 prohibits use of a sign identical or similar to a registered trade mark with reputation in the UK where such use is made ‘in the course of business’ and is made ‘without due cause’.

Meanwhile, at the end of October, news also emerged of a cease-and-desist demand from Louis Roederer, which owns the right to ‘Cristal’ champagne, against a small English winery producing ‘Crystal’. While the name may have borne a resemblance, the makers of Crystal argue the product itself can be differentiated: a pink pet nat sparkling wine with completely different packaging to that of the famous fizz.

These types of cases are reported in the press fairly often. It is common for those who are alleged to have infringed a well-known mark to suggest that the brand owner has suffered from a lack of sense of humour. One reason that these stories get such traction is if the infringer can spin a narrative that the brand holder is spoiling everyone’s fun – the accused party is never in a position to genuinely compete with the rights holder, nor is there ever any real risk of confusion as to the origin of the signs in question. A notable example of this was the Tolkien estate’s threatened action against Lord of the Bins.

So why does such a strict approach apply in trade mark law? Unlike the law of copyright, satirical or parodical use of a mark is not a defence to a claim for trade mark infringement. Satirical or parodical use of a mark outwith a commercial context would likely not infringe s.10(3) because it is not ‘in the course of business’.

But in a situation where promotional material or products are ‘riffing’ on the mark, even where there is clearly no risk of confusion, the only port of call could be a freedom of expression claim. Such claims only arise in circumstances of serious concerns about censorship and so are unlikely to apply to something more light-hearted.

Does this mean that there’s no room for a good sense of humour in trade mark enforcement? Not necessarily. It is certainly becoming more common that larger entities are trying to engage with minor infringers in a more media-friendly way. The leading example in this regard remains Netflix’s inhouse lawyer’s comical cease and desist letter regarding a ‘Stranger Things’ themed pop-up bar back in 2017. This approach, when done properly, can avoid scope for infringers being able to argue they are a plucky David taking on a bullying Goliath, while still getting the message across. Where possible, allowing a short period to run off objectionable stock or for rebranding to take place can gain goodwill (or at least avoid bad press) and may well be quicker and cheaper than litigating. Perhaps we could call this easyEnforcement?

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