Enterprise Holdings, Inc. v Europcar Group UK Ltd and Another
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 13 January 2015 |
| Neutral Citation | [2015] EWHC 17 (Ch) |
| Docket Number | Case No: HC13B02541 |
| Court | Chancery Division |
| Date | 13 January 2015 |
[2015] EWHC 17 (Ch)
The Hon Mr Justice Arnold
Case No: HC13B02541
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
Henry Carr QC and Simon Malynicz (instructed by Lewis Silkin LLP) for the Claimant
Geoffrey Hobbs QC, Guy Hollingworth and Alaina Newnes (instructed by Squire Patton Boggs (UK) LLP) for the Defendants
Hearing dates: 8–12, 18 December 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| Introduction | 1–5 |
| The rival logos | 6 |
| The Trade Marks | 7 |
| Stay pursuant to Article 104 | 8–13 |
| 497 | 14–16 |
| The territorial dimension to Enterprise's claim | 19–27 |
| The witnesses | 12–14 |
| Enterprise's witnesses | 19–23 |
| Europcar's witnesses | 24–27 |
| Admissibility of evidence | 28–33 |
| Weight of evidence | 34 |
| Factual background | 35–94 |
| The vehicle rental market in the UK | 35–38 |
| Enterprise | 39–48 |
| Enterprise in Europe | 49–53 |
| Enterprise's use of its current 'e' logo in the UK | 54–55 |
| Europcar | 56–66 |
| Development of the e-moving logo | 67–75 |
| Europcar's uses of the e-moving logo | 76–81 |
| Arrangements between Vantage, Europcar and Enterprise with respect to the National and Alamo brands | 82–90 |
| Third party 'e' trade marks | 91–94 |
| The surveys | 95–109 |
| The OHIM Surveys | 103–105 |
| The Court Surveys | 106–108 |
| The results | 109–109 |
| The law | 110–84 |
| The key provisions of the Regulation | 110–111 |
| Article 9(1)(b) of the Regulation | 112–117 |
| Likelihood of confusion | 113–117 |
| Article 9(1)(c) of the Regulation | 118–127 |
| Reputation of the trade mark | 120–121 |
| Link | 122 |
| Detriment to the distinctive character of the trade mark | 123–124 |
| Unfair advantage | 125–127 |
| Contextual assessment | 128 |
| Date of assessment | 129 |
| The average consumer | 130–143 |
| Acquired distinctive character | 144–152 |
| Black and white registrations | 153–154 |
| Use of the sign in a colour associated with the defendant | 155 |
| Passing off | 156–169 |
| Date of assessment | 157 |
| Standard of perspicacity | 158–159 |
| Deception of foreign consumers | 160–169 |
| Date of assessment | 170–171 |
| Enterprise's claim under Article 9(1)(b) | 172–217 |
| The average consumer | 172–173 |
| The average consumer's level of attention | 174–182 |
| Inherent distinctive character of 497 | 183 |
| Acquired distinctive character of 497 | 184–198 |
| Market share | 185 |
| How intensive, geographically widespread and longstanding | 186 |
| Amount invested in promoting the mark | 187 |
| Trade evidence | 188–189 |
| The Surveys | 190–197 |
| Conclusion | 198 |
| Comparison between 497 and the sign | 199–202 |
| Comparison between the respective services | 203 |
| Context of use | 204–206 |
| Is Europcar under a duty not to exacerbate confusion? | 207 |
| Is there evidence of actual confusion? | 208–215 |
| Conclusion | 216–217 |
| Enterprise's claim under Article 9(1)(c) | 218–225 |
| Reputation | 219 |
| Link | 220 |
| Detriment to distinctive character | 221–222 |
| Unfair advantage | 223–225 |
| Passing off | 226 |
| Summary of conclusions | 227 |
Introduction
The Claimant ("Enterprise") and the Defendants ("Europcar") are competitors in the field of vehicle rental services. Enterprise has for many years used a stylised lower case 'e' logo on a green background as a prominent part of its branding. Starting in December 2012, Europcar has made increasing use of a stylised lower case 'e' logo on a green background (referred to as the "e-moving logo") as a prominent part of its branding. Enterprise alleges that Europcar have thereby infringed 10 United Kingdom Registered Trade Marks and Community Trade Marks ("the Trade Marks") and committed passing off. Europcar denies this.
As is regrettably increasingly common with trade mark disputes between large companies, the parties have treated this dispute as if it were a state trial. A considerable number of issues were raised, although it is fair to note that both sides reduced the number of issues shortly before trial, Enterprise by abandoning an allegation that Europcar had intended to take advantage of the distinctive character and reputation of the Trade Marks and Europcar by abandoning a claim for revocation of two of Enterprise's UK Trade Marks for non-use, and that some points were abandoned during the course of the trial. A large volume of evidence and documentation has been put before the court. There were 34 trial bundles, not including a number of "reserve" trial bundles available in court in case they were needed, of which five were in the event used. Enterprise called 14 witnesses and Europcar called 10 witnesses. Enterprise's skeleton argument ran to 155 paragraphs and Europcar's skeleton argument ran to 201 paragraphs. Enterprise's written closing submissions ran to 204 paragraphs and Europcar's written closing submissions ran to 100 paragraphs plus a 23 page annex.
As is also regrettably increasingly common in such cases, there have been a number of satellite disputes, in particular over survey evidence and the admissibility of evidence. I shall consider these matters below.
Europcar applied to register its e-moving logo as a Community Trade Mark on 13 November 2012. On 4 March 2013 Enterprise opposed the application on relative grounds, relying upon no less than 20 earlier Community Trade Marks, including the Community Trade Marks it relies on in the present proceedings. The opposition proceedings are presently pending before the Opposition Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs). Enterprise has also filed opposition proceedings against applications by Europcar to register the e-moving logo in 31 countries, relying upon various earlier trade marks. More generally, Enterprise and Europcar have become engaged in at least 98 trade mark disputes in registries around the world. As part of these disputes, Enterprise and Europcar have each challenged various earlier registrations of the other on the grounds of non-use.
It is manifest that the parties would be well advised to try to settle their differences on a global basis. It is also manifest that, whatever the legal merits of their respective positions may be in any particular country, the parties would be well advised to try to resolve their differences in a manner which enables them to promote their respective services to consumers using branding that is distinctively different to each other's.
The rival logos
Enterprise's current 'e' logo (on the left) and Europcar's e-moving logo (on the right) are reproduced below. I must emphasise that, as explained below, this side-by-side comparison does not reflect the correct legal test.
The Trade Marks
Enterprise has alleged infringement of three UK Registered Trade Marks and seven Community Trade Marks. Some of the Trade Marks are black and white, while others are green and white. The Trade Marks are registered in respect of goods and services which include "vehicles" in Class 12 and "vehicle rental services" and "vehicle leasing services" in Class 39. The Trade Marks are registered with effect from dates ranging from 14 August 1993 to 14 September 2010. Two of the national registrations are subject to disclaimers of the right to the exclusive use of a letter 'E'. To complicate matters still further, as explained below, the claims for infringement of three of the Community Trade Marks have been stayed pursuant to Article 104 of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) ("the Regulation").
Stay pursuant to Article 104
Enterprise first became aware of the e-moving logo when it appeared in a Europcar press release dated 6 December 2012 (as to which, see further below) and on a Christmas card in December 2012. Enterprise raised an objection to the use of this logo in an email from Enterprise's General Counsel to Europcar's General Counsel dated 3 January 2013. On 14 January 2014 Europcar's General Counsel replied, making it clear that Europcar intended to continue the acts complained of.
As noted above, Enterprise opposed Europcar's Community Trade Mark application on 4 March 2013. On 10 April 2013 Europcar filed cancellation proceedings at OHIM in respect of seven of Enterprise's Community Trade Marks on the ground of non-use.
Enterprise commenced these proceedings on 27 June 2013. Three of the Community Trade Marks Enterprise relied on were among those which were the subject of Europcar's cancellation claim in OHIM. Europcar subsequently pleaded in their Defence and Counterclaim that the court should stay the infringement claims in respect of those CTMs pursuant to Article 104 of the Regulation. They also alleged non-use of two of Enterprise's UK Trade Marks and counterclaimed for revocation of those Trade Marks.
On 10 September 2013 Europcar proposed that the order for directions should include a stay of the claim in respect of the three Community Trade Marks which were in issue at OHIM pursuant to Article 104. Enterprise agreed to this, and a consent order was made by Deputy Master Smith on 14 January 2014.
On 2 December 2014 Europcar abandoned their counterclaim for revocation of the UK Trade Marks. On the same date Enterprise asked whether Europcar would be prepared to agree to lift the stay on the three Community Trade Marks. On 3 December 2014 Europcar replied saying that they refused to agree to lift the stay and that there were no "special...
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