Enterprise Holding Inc. v Europcar Group UK Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Arnold J |
| Judgment Date | 11 February 2015 |
| Neutral Citation | [2015] EWHC 300 (Ch) |
| Docket Number | Case No: HC13B02541/HC 2013-000185 |
| Court | Chancery Division |
| Date | 11 February 2015 |
[2015] EWHC 300 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
Royal Courts of Justice
The Rolls Building
7 Rolls Buildings
London EC4A 1NL
Mr. Justice Arnold
Case No: HC13B02541/HC 2013-000185
Mr Henry Carr QC and Mr Simon Malynicz (instructed by Lewis Silkin LLP) for the Claimant.
Mr Geoffrey Hobbs QC and Mr Guy Hollingworth (instructed by Squire Patton Boggs (UK) LLP) for the Defendants.
Specificity of the Injunction
I have to deal with the specificity of the injunction to restrain infringement of 497 which should be granted in the present case. So far as that is concerned, I adhere to the views that I expressed in Interflora Inc v Marks and Spencer plc [2013] EWHC 1484 (Ch), [2014] FSR 2 at [14] to [24]. In particular, I adhere to the view that I do not think it would be appropriate for a first instance judge to depart from the established practice of this Court and that that is properly a matter for the appellate courts to consider. Although the matter was ventilated before the Court of Appeal in the same case, [2014] EWCA Civ 1403, [2015] ETMR 5 at [196]–[197], it does not seem to me that those paragraphs indicate that the practice of the court should be changed.
Accordingly, it seems to me that the starting point is that, ordinarily, an injunction should be granted in the general form. Nevertheless, the court has a discretion to impose a specific injunction in an appropriate case.
I see no factors in the present case that make it appropriate to grant a specific injunction as opposed to a general injunction. Accordingly, I will grant an order in the general form.
[Further Argument]
Geographical Scope of Remedies
I have to deal with the question of whether the remedies which Enterprise should be granted, having regard to the findings of infringement in my judgment, should be confined to the United Kingdom or should extend throughout the European Union. When I say "remedies", I refer both to the geographical scope of the injunction and to the geographical scope of the inquiry as to damages or, alternatively, an account of profits.
I have come to the conclusion that, in the particular circumstances of the present case, both remedies should be confined to the United Kingdom. My reasons are as follows.
The first relates to the judgment of the Court of Justice of the European Union in Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-2801. In that case, Chronopost was the proprietor of a Community trade mark for the word WEBSHIPPING. DHL had been found to have infringed that Community trade mark through use of the signs WEBSHIPPING and WEB SHIPPING. My understanding is that that finding of infringement was made pursuant to Article 9(1)(a) of the Community Trade Mark Regulation. The Cour de Cassation referred questions to the CJEU regarding the nature and geographical scope of the injunction which should be granted pursuant to what was then Article 98(1) of the Regulation, now Article 102(1) of the codified version of the Regulation.
The Court of Justice ruled that a prohibition against further infringement or threatened infringement issued by a competent Community trade mark court must, as a rule, extend to the entire area of the European Union. The court gave two main reasons for that conclusion. The first was the unitary character of the Community trade mark and, accordingly, the need to ensure that it received uniform protection throughout the EU. The second was the risk of inconsistent decisions if successive actions were to be brought involving the same parties and the same acts of alleged infringement in different Member States.
The Court of Justice nevertheless recognised that there could be exceptions to the general rule. As it stated at [48]:
"Accordingly, if a Community trade mark court, hearing a case in circumstances such as those of the main proceedings, finds that the acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to part of the territory of the European Union, in particular because the applicant for a prohibition order has restricted the territorial scope of its action in exercising its freedom to determine the extent of that action, or because the defendant proves that the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example, on linguistic grounds, that court must limit the territorial scope of the prohibition which it issues."
It can be seen that the second of the two possibilities acknowledged by the Court is where the defendant proves that the use of the sign does not affect, and is not liable to affect, the functions of the trade mark. That makes perfect sense in a case where the claim is for infringement pursuant to Article 9(1)(a) of the Regulation, and if one interprets Article 9(1)(a) as throwing on to the defendant the burden of proving that the use of the sign does not affect and is not liable to affect the functions of the trade mark once it has been established by the trade mark proprietor that the first, second, fourth and fifth conditions for infringement pursuant to Article 9(1)(a) have been established. In that regard, see the judgment which I shall be delivering tomorrow in the case of Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch).
In cases where the claim is made pursuant to Article 9(1)(b) or Article 9(1)(c) of the Regulation, however, the same logic is not applicable. On the contrary, under Article 9(1)(b) of the regulation, the onus lies upon the trade mark proprietor to establish a likelihood of confusion. The trade mark proprietor cannot rely upon any presumption of a likelihood of confusion, such as Article 16(1) of TRIPS requires in a double identity case. Likewise, in an Article 9(1)(c) case, the trade mark proprietor must establish that the use of the sign causes one of the three specified kinds of injury. The existence of a likelihood of confusion or one of those kinds of injury depends on factors such as the distinctive character of the trade mark and the similarity of the sign, both of which can vary from Member States depending, for example, the extent of use of the trade mark and linguistic factors. Accordingly, it would not, in my judgment, accord with the logic of the approach of the Court of Justice at [48] to require the defendant to bear the onus of proving that the use of the sign does not affect, and is not liable to affect, any of the functions of the trade mark in other Member States in an Article 9(1)(b) or an Article 9(1)(c) case.
I acknowledge straightaway, however, it is far from clear that interpretation of the law is correct having regard to the two factors which the Court relied upon for as supporting the general rule which it articulated, since those factors are equally applicable regardless of the basis of the claim for infringement.
On the other hand, the matter does not stop there, because the Court was only concerned with the geographical scope of the injunction. It was not concerned with the other remedies to which the trade mark proprietor might be entitled, and in particular the financial remedies for past acts of infringement. At [29]–[31] of its judgment in DHL, the Court was at pains to distinguish between the position under Article 102(1) of the codified version of the Regulation, dealing with injunctive relief, and the position under Article 102(2) of the Regulation, dealing with other forms of relief. Nevertheless, as a matter of logic, if a trade mark proprietor who has established infringement of his Community trade mark is entitled to injunctive relief on a pan-European basis for the reasons given by the Court of Justice, it is difficult to see why the trade mark proprietor should not also be entitled to financial remedies for past acts of infringement on a pan-European basis.
Consideration of financial remedies of past acts of infringement, to my mind, reinforces the proposition that the logic which the court enunciated in [48] cannot apply to an Article 9(1)(b) or an Article 9(1)(c) case, because that would mean that the defendant would have cast upon it the onus of proving that it had not committed acts which affect or are liable to affect the functions of the trade mark in order to escape financial remedies for past acts committed in Member States other than the forum State.
In his submissions to me this morning, counsel for Enterprise submitted, albeit with reference to the circumstances of the present case, that the position as to the geographical scope of financial remedies should stand or fall with that of the geographical scope of the injunction. I agree with that.
For the reason I gave earlier, I recognise that the provisional view of the law which I have just articulated is one which is very far from being acte clair. This is an issue upon which I have no doubt that a reference to the Court of Justice will at some point be required.
I turn, therefore, to my second reason, for which purpose I shall take the law as being as it is stated in DHL. In the present case, the procedural position is one where, in my judgment, the first exception recognised by the Court of Justice in [48] applies. Enterprise relies upon the undoubted fact that, as it has always been clear from its...
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