Car Wars: Enterprise and Europcar
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| The Rival Logos: Enterprise's to the left and Europcar's to the right |
In Enterprise Holdings, Inc v Europcar Group UK Ltd and another [2015] EWHC 17 (Ch) (13 Jan 2015) Enterprise Holdings Inc. ("Enterprise") sued Europcar UK Ltd and its French holding company ("Europcar") for trade mark infringement and passing off. Enterprise trades under the logo to the left while Europcar had begun to use the sign on the right. The litigation in England iwa part of a global struggle between the two car hire giants over those logos. According to Mr Justice Arnold there are some 98 trade mark disputes between those parties over Europcar's new logo around the world.
Enterprise alleged infringement of 3 of its UK registered trade Marks and 7 of its Community ones. At trial Enterprise focused its case on CTM 937,4497 ("the CTM") which was registered as of 14 Sept 2010 in respect of "vehicle rental and leasing services". The device appears below:
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Enterprise contended that Europcar's new logo infringed its registered trade mark under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark OJ 24.3.2009 L78/1).
Art 9 CTM Regulation
Art 9 (1) (b) and (c) provide:
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the Community trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
Claim under art 9 (1) (b)
Art 9 (1) (b) and (c) provide:
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the Community trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
Claim under art 9 (1) (b)
As to art 9 (1) (b) the judge directed himself at para [112]:
"In order to establish infringement under Article 9(1)(b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
In this case, there was no dispute as to the first 5 conditions. This action turned on whether there was a likelihood of confusion. The judge continued at paragraph [113]:
"The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the European Union in a considerable number of decisions ..."
He summarized the principles derived from those decisions as follows:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
His Lordship reminded himself at paragraph [116] that the Court of Justice had defined "the likelihood of confusion" as "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings" in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] CEC 920, [1998] EUECJ C-39/97, [1998] ECR I-2655, [1998] All ER (EC) 934, [1999] FSR 332, [1998] ECR I-5507, [1999] 1 CMLR 77, [1999] RPC 117, [1999] ETMR 1. Also, that in determining whether there is a likelihood of confusion under art 9 (1) (b) of the CTM regulation, the court must take into account the precise context in which the sign has been used.
"In order to establish infringement under Article 9(1)(b) of the Regulation, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
In this case, there was no dispute as to the first 5 conditions. This action turned on whether there was a likelihood of confusion. The judge continued at paragraph [113]:
"The manner in which the requirement of a likelihood of confusion in Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive, and the corresponding provisions concerning relative grounds of objection to registration in both the Directive and the Regulation, should be interpreted and applied has been considered by the Court of Justice of the European Union in a considerable number of decisions ..."
He summarized the principles derived from those decisions as follows:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
His Lordship reminded himself at paragraph [116] that the Court of Justice had defined "the likelihood of confusion" as "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings" in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] CEC 920, [1998] EUECJ C-39/97, [1998] ECR I-2655, [1998] All ER (EC) 934, [1999] FSR 332, [1998] ECR I-5507, [1999] 1 CMLR 77, [1999] RPC 117, [1999] ETMR 1. Also, that in determining whether there is a likelihood of confusion under art 9 (1) (b) of the CTM regulation, the court must take into account the precise context in which the sign has been used.
At paragraph [172] he identified "the average consumer" in this case as
"an ordinary member of the public who rents a vehicle. As noted above, the evidence is that people who rent vehicles are more likely to be male, aged 17-54 and from the ABC1 social groups. As explained above, many consumers of vehicle rental services in the UK are resident abroad, in particular elsewhere in Europe and in North America."
He found that such a person "does not always display that level of attention throughout their interaction with vehicle rental companies." He added:
"On the contrary, in various circumstances, many consumers are stressed, in a hurry and relatively inattentive. This is particularly the case when they are collecting and returning vehicles in locations such as airports. But it may also be the case when collecting and returning vehicles in other locations."
The judge compared the Europcar sign with the CTM visually and conceptually and concluded at paragraph [202]:
"Overall, it seems to me that there is some similarity between the two logos, but not a great deal. The similarity is not such that anyone who was able to compare the two logos would mistake them. Nor would someone who had a clear mental image of one logo be likely to mistake the other for it. But I consider that someone who only had an imperfect recollection of the Enterprise logo, and then saw the Europcar logo, could mistake the latter for the former, at least in the absence of any differentiating context. In particular, someone who recalled the concept of the Enterprise logo as I have described it could, when they saw the e-moving logo, see it as conveying a very similar concept. As is well known, the human eye is not an accurate recorder of detail and has a tendency to see what it expects to see."
The services in relation to which the Europcar sign had been used were identical to those for which the CTM had been registered. There was evidence of actual confusion which the judge attributed to the Europcar logo.
Claim under art 9 (1) (c)
At paragraph [119] of his judgment Mr Justice Arnold directed himself that:
"in order to establish infringement under Article 9(1)(c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause."
In this case there was a dispute as to the CTM's reputation, the existence of a link between the sign and the trade mark in the mind of the average consumer and whether there had been detriment to the distinctive character of the trade mark or unfair advantage had been taken of the distinctive character or repute of the CTM.
On the first point, the judge conclude at paragraph [219] that the CTM had acquired a reputation in the UK in the form in which it had been used, that is to say in the colours green and white. Given the size of the UK market for, and the transnational character of, vehicle rental services, he considered that was sufficient to constitute a reputation in the EU. Although the similarity between Europcar's logo and the CTM was relatively low, he considered that the similarity was sufficient, having regard to the reputation of the CTM and the paucity of other 'e' logos in the field of vehicle rental services, for the use of the Europcar sign to bring the CTN to the mind of the average consumer, but not strongly so. However, he was not persuaded that there was any evidence of detriment or unfair advantage.
Passing off
At paragraph [156] the judge referred to the three elements of an action for passing off expounded by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc and others [1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 12:
"(1) the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indication;
(2) the defendant has used, or threatens to use, a name, mark or other indication which has led, or is likely to lead, the public to believe that goods or services offered by the defendant are goods or services of the claimant, or connected with it, and thus to a misrepresentation by the defendant (whether or not intentional); and
(3) the claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the defendant's misrepresentation."
In his Lordship's view, the facts that gave rise to a claim under art 9 (1) (b) also gave rise to an action for passing off.
Comment
The upshot is that the judge found for Enterprise on its claim under art 9 (1) (b) of the CTM regulation and passing off but not on its claim under art 9 (1) (c). This case does not create any new law (except perhaps on the question of whether, "where the claimant does have a business and goodwill in England and Wales, it can rely upon deception of customers who are resident abroad, and in particular deception of customers who became aware of the claimant's business and trade mark in their home country and then encounter the defendant's sign in this country" which he decided in the affirmative) but it is like all of Mr Justice Arnold's judgments great revision on the relevant law. The painstaking way in which he compared the defendant's sign to the registered trade mark should be followed by judges and hearing officers in other cases.
Further Information
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