Enterprise Holdings Inc. v Europcar Group UK Ltd, Europcar International Sasu
| Jurisdiction | England & Wales |
| Judge | Mr Justice Morgan |
| Judgment Date | 22 July 2014 |
| Neutral Citation | [2014] EWHC 2498 (Ch) |
| Docket Number | Case No: HC13B02541 |
| Court | Chancery Division |
| Date | 22 July 2014 |
[2014] EWHC 2498 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
Royal Courts of Justice
Rolls Building, Fetter Lane,
London, EC4A 1NL
Mr Justice Morgan
Case No: HC13B02541
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
Hearing dates: 20 June and 1 July 2014
Introduction
This is another case about survey evidence in relation to a trade mark. In this case, the survey evidence relates to the distinctiveness of the Claimant's marks, which the Claimant alleges have been infringed by the Defendants. The survey evidence does not relate to the possibility of confusion between the Claimant's marks and any sign or device used by the Defendants. Further, this case does not involve a witness collection exercise.
Mr Carr QC and Mr Malynicz appeared on behalf of the Claimant and Mr Hobbs QC and Mr Hollingworth appeared on behalf of the Defendants.
The claim
The business of the Claimant, Enterprise Holdings Inc (referred to in this judgment as "Enterprise"), includes the provision of vehicle rental services. The business of the Defendants, Europcar Group UK Ltd and Europcar International SASU (together referred to in this judgment as "Europcar"), also includes vehicle rental services. In the present action, Enterprise alleges that Europcar has infringed its trade marks and is liable for passing off its products and services as those of Enterprise.
Enterprise's pleaded case refers to three United Kingdom trade marks and seven Community trade marks. Europcar has counterclaimed for revocation of two of the United Kingdom trade marks, pursuant to section 46 of the Trade Marks Act 1994 ("the 1994 Act") on the grounds that they have not been put to genuine use in the United Kingdom, in relation to any or all of the goods for which they were registered.
There are also concurrent proceedings before the Office for Harmonisation in the Internal Market ("OHIM") which concern Enterprise's Community trade marks. Those proceedings appear to have started with an application by Europcar to register a sign as a Community trade mark, which application was opposed by Enterprise, pursuant to article 41 of Council Regulation (EC) No 207/2009 ("the CTM Regulation"), relying on its earlier Community trade marks. That opposition has led to Europcar applying for the revocation of some of Enterprise's Community trade marks, pursuant to article 51 of the CTM Regulation, on the ground that the same have not been put to genuine use in connection with the goods or services in respect of which they were registered. In particular, Europcar has applied, on that ground, for revocation of three of the seven Community trade marks pleaded by Enterprise in these proceedings. In accordance with article 104 of the CTM Regulation, on 24 January 2014, an order was made in the present action staying Enterprise's claim for infringement of those three Community trade marks.
For the purpose of the proposed survey evidence as to the distinctiveness of Enterprise's marks, Enterprise has selected one particular mark, which is one of its Community trade marks. This mark is a stylised letter "e" on a green background. I will refer to it as Enterprise's "green logo". Enterprise's case is that its green logo has enhanced distinctiveness and a reputation and considerable goodwill attaches to it. It says that the other marks on which it relies in these proceedings are part of the same family of marks as this particular green logo.
Enterprise's green logo has been used by Enterprise in its advertisements and in marketing material so that it appears immediately before the word "Enterprise" or even as the first letter of the word "Enterprise" but its case is that the green logo has also been used separately from the word "Enterprise".
Enterprise has pleaded that:
(1) its trade marks (including the particular green logo) have an enhanced distinctive character and/or a reputation as a result of the use that has been made of them both in the United Kingdom and elsewhere in the EU;
(2) the United Kingdom use and promotion amounts to sufficient use for the purposes of establishing an EU reputation and an enhanced distinctive character in the EU in respect of Enterprise's Community trade marks;
(3) Enterprise's marks have been extensively used in its advertisements and marketing;
(4) Enterprise's marks have been put to very substantial use in the United Kingdom leading to a very substantial goodwill and reputation in the use of the marks so that they have come to denote goods and services of Enterprise exclusively.
Enterprise has further pleaded that, since around 2012, Europcar has used a figurative mark or sign in such a way as to infringe Enterprise's rights. In particular, Enterprise says that there is an infringement, first, pursuant to article 9(1)(b) of the CTM Regulation (in relation to the Community trade marks) and/or section 10(2) of the 1994 Act (in relation to the United Kingdom marks) and, secondly, pursuant to article 9(1)(c) of the CTM Regulation (in relation to the Community trade marks) and/or section 10(3) of the 1994 Act (in relation to the United Kingdom marks). The first of these allegations is that Europcar's sign is similar to Enterprise's marks in relation to goods or services which are identical or similar to those for which Enterprise's marks are registered, where there exists a likelihood of confusion on the part of the public which includes the likelihood of association with Enterprise's marks. The second of these allegations is that Europcar's use of its sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of Enterprise's marks and tends to cause members of the public to call to mind Enterprise and its trade marks; this is said to take unfair advantage of Enterprise's marks.
The passing off claim relies on the goodwill which had been pleaded in relation to the trade mark claims.
The Defence does not admit the alleged enhanced distinctiveness or reputation of, or the alleged goodwill associated with, Enterprise's marks and denies any infringement of Enterprise's rights.
The parties have agreed a list of issues which arise in the claim. This list includes an issue as to whether Enterprise's marks have an enhanced distinctive character and/or reputation and a further issue as to whether Enterprise's marks have come to denote goods and services of Enterprise exclusively.
The parties have not yet exchanged witness statements, which are due in September 2014. The claim is due to be tried in December 2014 with a time estimate of 4 days with a day's pre-reading for the judge.
The application
On 24 January 2014, the court gave directions in the claim. In particular it was directed that neither party had permission to adduce survey evidence without the leave of the court and further directions were given as to the making of an application for such leave.
On 28 February 2014, Enterprise applied in the present proceedings for permission to rely on survey evidence. The application sought the court's permission: (1) to adduce in evidence the results of a survey which has already been carried out for the purposes of the proceedings before OHIM ("the OHIM survey"); (2) to adduce in evidence the results of a further pilot survey carried out for the purposes of the present proceedings; (3) to carry out a full survey based on this pilot survey; and (4) to rely on expert evidence in relation to the above surveys.
The law as to distinctiveness
For present purposes, there was no real difference between the parties as to what is meant in the present context by the "distinctiveness" of a trade mark. Nonetheless, it is instructive to refer to some general statements as to the legal concepts involved and to the guidance in the cases as to the evidence which may be relevant in a dispute as to whether a mark has acquired a distinctive character as a result of its use. I was helpfully referred to the decision of Arnold J in Société des Produits Nestlé SA v Cadbury Ltd (" Nestlé") [2014] ETMR 17 and the very recent decision of the CJEU in Oberbank AG and another v Deutsche Sparkassen-und-Giroverband eV (" Oberbank") (Joined Cases C – 217/13 and 218/13; ECLI: EU: C:2014:2012) (19 June 2014).
I derive the following propositions from the decision in Nestlé:
(1) for a trade mark to possess distinctive character, it must serve to identify the goods or services, in respect of which registration is applied for, as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings;
(2) the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration is applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect;
(3) the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others;
(4) in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may...
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