The High Court has held that use by a car rental company of its “e” logo infringed a figurative Community trade mark (CTM) also incorporating the letter “e” and registered in relation to car rental services.
The CTM Regulation (207/2009/EC) provides that a CTM owner has the right to prevent unauthorised third parties from using, in the course of trade, any sign:
- Where, because of its similarity to the CTM, and the identity or similarity of the goods or services covered by the CTM and the sign, there exists a likelihood of confusion or association on the part of the public (Article 9(1)(b)).
- Which is identical with, or similar to, the CTM, which has a reputation in the EU, and where the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the CTM (Article 9(1)(c)).
In order to establish acquired distinctiveness, a significant proportion of the relevant class of persons must rely on the mark as indicating the origin of the goods.
EH owned a CTM registered in relation to vehicle rental and leasing services, which comprised a stylised letter "e". EH used the CTM both by itself and within various banners. EG used a logo (the logo) that also incorporated the letter "e" in its car rental services in three categories of use:
- On its own.
- As part of its sub-brands.
- In combination with the word "Europcar" and often the strapline “moving your way”.
EH sued for trade mark infringement and passing off in respect of EG‘s use of the logo.
The court held that the claim for infringement following a likelihood of confusion under Article 9(1)(b) succeeded in relation to all three categories of use of the logo. The claim for passing off also succeeded.
If the claim under Article 9(1)(b) had failed, so too would the claim for dilution under Article 9(1)(c). There was no detriment to the distinctive character of the CTM because, assuming no likelihood of confusion, there was no evidence of change in the economic behaviour of the average consumer.
A preliminary issue was whether the relevant public could include residents of a foreign country, such as the US. Since the vehicle rental market has a strong transnational character, it would be artificial and wrong to exclude consumers of vehicle rental services who were resident abroad from the relevant public in the UK. The foreign-based part of the relevant public should be treated with some caution, since it would inevitably be harder for the court to put itself into the position of those consumers than of consumers resident in the UK. Also, even if foreign residents were disregarded, it was important to bear in mind that the population of the UK was very heterogeneous. In particular, the population included a large number of people who were foreign nationals.
The CTM’s inherent distinctive character, its enhanced distinctive character acquired through use in green and white, and the identity of the respective services supported a likelihood of confusion. The average consumer’s level of attention was a neutral factor. Consumers in the field of vehicle rental services had varying levels of attention.
The relatively low degree of similarity between the logo and the CTM was a factor that pointed away from a likelihood of confusion, but did not by itself result in there being no likelihood of confusion. It remained possible that the average consumer without the opportunity to compare the logo and the CTM side by side would mistake the former for the latter as a result of imperfect recollection.
The context of EG‘s use pointed away from a likelihood of confusion, but the strength of this factor varied between the three categories of use. In relation to the third category, the logo retained an independent distinctive role.
Even in the absence of evidence of actual confusion, the court would probably have concluded that there was a likelihood of confusion as a result of the first category of use, but it would have hesitated as to whether to reach the same conclusion in relation to the second category of use and, even more so, the third category. However, given the evidence of actual confusion, the court also found a likelihood of confusion on the part of the average consumer from the second and third categories of use.
The court decided in principle, absent case law on the point, that when assessing the likelihood of confusion in the UK, the relevant public could include residents of a foreign country. Similarly, in passing off, in appropriate cases, a claimant can rely on the deception of customers resident abroad.
The decision illustrates the importance of the context in which the mark is used and the significance of evidence of actual confusion, which bolstered EH‘s case in relation to categories of use where the likelihood of confusion was assessed to be weaker.
The court interpreted the European Court of Justice’s comments in Oberbank AG v Deutscher Sparkassen, in relation to survey evidence to establish acquired distinctiveness, to mean that the percentage of consumers that would be a sufficiently significant proportion of the relevant class of persons depended on the circumstances of the case, and was for the national court to assess (See Practical law).
The court was critical of the procedure in the UK required to show that survey evidence will have “real value“, as prescribed in Marks & Spencer v Interflora, as it had involved the parties in an expensive two-day hearing before the trial, which did not save any costs at trial but rather required the court to consider criticisms of the surveys twice ( EWCA 150; see Briefing "Surveys in trade mark infringement cases: lessons from Marks & Spencer v Interflora"). The Court of Appeal again emphasised that survey evidence should only be admitted if it was of real value and even then only if the value justified the cost (Interflora Inc and another v Marks & Spencer plc (Rev 1)  EWCA Civ 319). Following the Court of Appeal’s remission of Interflora for re-trial by the High Court, it remains to be seen whether this aspect will also be reconsidered (Interflora Inc and others v Marks and Spencer plc  EWCA Civ 1403).
Case: Enterprise Holdings Inc v Europcar Group UK Ltd and another  EWHC 17 (Ch).
First published in the March 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.