High Court: Commercial Court declines jurisdiction of easyJet intellectual property case

About this case:

• Citation:
  [2024] IEHC 590
• Judgment:
  External link
• Court:
  High Court
• Judge:
  Mr Justice Michael Twomey

Delivering judgment for the High Court, Mr Justice Michael Twomey opined that “it seems to this Court that when one goes through all the factors indicating that there is a targeting of customers in Ireland as alleged by EasyGroup, this is not 26 a situation where, from ‘start to finish’, a consumer in their encounter with the easymarkets.com website is being targeted, qua Irish resident, by the website…”

William Fry acted for EasyGroup while Browne Jacobson acted for Easy Forex.

Background

The plaintiffs, the owners of easyJet and other brands, sued the Cyprus-based defendant financial services companies in respect of alleged trademark infringement and passing off.

Having five EU trademarks containing the word ‘easy’, the plaintiffs claimed that Easy Forex infringed their trademarks by its use of the word in their financial services business “Easy Forex”.

The plaintiffs also claimed that they had a valuable reputation and goodwill in the name of easyJet and in their family of brands (including easyFood, easyHotel and easyCleaning), alleging that Easy Forex was passing itself of their group of brands.

The defendants had 11,255 users of their online financial services, 16 of which were based in Ireland. 

The defendants challenged the jurisdiction of the Irish courts to hear the claim pursuant to Article 125(5) of Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark (EUTMR) and pursuant to Article 7(2) of Regulation (EU) 1215/2012 on Jurisdiction and the Recognition and Enforcement of Judgment in Civil and Commercial Matters (the Recast Brussels Regulation).

The High Court

Mr Justice Twomey set out the relevant provisions of the EUTMR, noting that Article 125(5) thereof provides an alternative to the general rule that a defendant is to be sued in the State in which it is domiciled, allowing instead for a claim to be brought in the courts of the member state in which the act of infringement alleged has been committed or threatened.

The court then turned to the Recast Brussels Regulation, which provides for persons domiciled in a member state to be sued in the courts of that member state, except in matters relating to tort, delict or quasi-delict, where action in the courts of the place in which the harmful event occurred or may occur is permitted.

Trademark infringement

The defendants relied on the interpretation of the CJEU in inter alia C-172/18 AMS Neve Ltd & Ors v. Heritage Aidio SL & Anor ECLI:EU:C:2019:674, in which the court confirmed that an ‘act of infringement’ relates to active conduct on the part of the person causing the alleged infringement, which acts must have been committed in the territory where they can be classed as advertising or as offers for sale. 

Mr Justice Twomey reasoned that if online activity in the form of advertising and offers for sale were directed at consumers in Ireland by the defendants in Cyprus, that would entitle the plaintiffs as proprietors of the trade mark to bring proceedings in the Ireland under Article 125(5). 

The judge also considered C-324/09 L’Oreal and Others EU:C:2011:474 as authority for the proposition that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis to conclude that the offers for sale displayed there are targeted at consumers in that territory.

The plaintiffs suggested that Easy Forex’s Irish customer base entitled them per se to sue in Ireland, without any necessity to establish “targeting”. The plaintiffs relied upon C-98/13 Blomqvist v Rolex SA ECLI:EU:C:2014:55 which stated in the context of the sale of goods that where there has been a sale, it is not necessary for the goods to have been the subject of offers for sale or targeted advertising. The plaintiffs claimed that the same principle applied to the sale of services.

Mr Justice Twomey opined that “there is a difference between the online sale of goods and the online sale of services and this is why the cases make clear that before the owner of an online business can be sued in another Member State for trade mark infringement, rather than in the default jurisdiction, i.e., its country of domicile, it must be clear that the business has targeted that other Member State rather there being simply a supply of a service which arose primarily because of the border-free nature of the internet.”

Examining and applying the multifactorial test set out by the UK Supreme Court in Lifestyle Equities CV and Anor v Amazon UK Services Ltd and Ors [2024] UKSC 8, the High Court determined that this was not a situation where, from ‘start to finish’, a consumer in their encounter with the easymarkets.com website is being targeted, qua Irish resident, by the website, unlike the situation in Lifestyle.

The judge highlighted inter alia that the fact that the defendants’ website, easymarkets.com, recognised a person’s Irish IP address and automatically provided an Irish telephone code and address options, and presented itself in English, did not evidence targeting in the manner of that in Lifestyle.

The court also rejected inter alia that the use of a .com rather than a .cy website supported the plaintiffs’ contentions, noting: “If the website had been an .ie one this fact might support a claim that there was a targeting of Ireland.”

Passing off

As to the plaintiffs’ passing off claim, the court considered the Recast Brussels Regulation and whether there was a “close connection” between Ireland and the action so as to avoid the defendants from being sued in a Member State which it could not possibly have foreseen.

Finding that for the purposes of this jurisdictional question it was necessary to consider whether there was a targeting of Ireland by the defendants, the court determined that the evidence was the same as in the context of the trademark infringement claim and was insufficient to support a “close connection” with Ireland.

Conclusion

Accordingly, the High Court declined jurisdiction of the claims. 

EasyGroup Limited & Anor v Easy Forex Trading Limited & Anor [2024] IEHC 590