Understanding series trademarks in the EU: Lessons from the Easygroup vs. Bunq trademark dispute

In a recent judgment of the District Court The Hague, the Netherlands (Case No. ECLI:NL:RBDHA:2024:10136), the court addressed the concept of a “seriemerk” or “series mark” in the context of a dispute between Easygroup and Bunq. This case sheds light on the requirements and limitations of claiming a series mark under European Union trademark law.

Background

Easygroup argued that due to the extensive use of various “easy” prefixed trademarks, it has established a series mark, thereby extending protection to any mark beginning with “easy,” including those used by Bunq. Bunq countered the claims by challenging the validity of Easygroup’s trademarks and asserting that the criteria for a series mark had not been met. The court first examined the validity of the trademarks in question. Of the 14 EU trademarks cited by Easygroup, only four were considered valid at this stage: EASYJET (1232909 and 10584001), EASYCAR, and EASYBUS.

Concept of a series trademark

The court clarified that a series mark is not a legally defined term under trademark law. Unlike collective marks, a series mark cannot be registered as such. Instead, the concept is used as a relevant factor when assessing the likelihood of confusion under Article 9(2)(b) of the EU Trademark Regulation (UMVo).

The court referred to the decision of the Court of Justice of the European Union (CJEU) in Case C-317/10 P, Uni (ECLI:EU:C:2011:405), which outlined that the presence of a series or family of marks can be a relevant factor in determining the likelihood of confusion. This is particularly true when the marks share a common distinctive element, which may lead consumers to associate the new mark with the existing series, thereby causing confusion about the commercial origin of the goods or services.

Distinctiveness required

For a successful claim of a series mark, the common element must be distinctive. The court found that the prefix “easy,” as used by Easygroup, is descriptive and lacks distinctiveness. As a result, Easygroup’s claim based on the existence of a series mark failed. The court emphasized that merely having multiple registrations with a common element is insufficient. The marks must be used and recognized as a family of marks by the relevant public.

Conclusion

The judgment highlights the stringent requirements for establishing a series mark. It underscores the necessity for the common element to be distinctive and for the marks to be perceived as a family by the public. Easygroup’s reliance on the descriptive “easy” prefix was insufficient to meet these criteria, leading to the dismissal of their claim based on a series mark.

For a successful claim based on a series mark, take a look at the judgment in the dispute between McDonalds and McDreams (ECLI:EU:T:2019:738) in which the court found that use of “McDreams” would take unfair advantage of the distinctive character and reputation of McDonald’s earlier marks and family of marks.

The Easyjet vs. Bunq case serves as a reminder for brand owners about the importance of distinctiveness and public perception in trademark law, particularly when attempting to leverage the concept of a series mark to extend trademark protection.

Leonie Kroon

kroon@dillingerlaw.nl