Enterprise and Europcar are two of the major players in the car rental market in the UK. For many years, Enterprise has used a stylised "e" logo (the Enterprise logo) to promote its services. The Enterprise logo has been registered as a Community Trade Mark in black and white since March 2011 and is used in green and white, as shown below.
Towards the end of 2012, Europcar also adopted a stylised "e" logo (the Europcar logo) which was used on its own, in connection with descriptive sub-brands and together with the house mark EUROPCAR and strapline "moving your way".
Enterprise commenced proceedings at the High Court on 27 June 2013, claiming that use of the Europcar logo: (i) is likely to cause confusion with the Enterprise logo; (ii) is detrimental to the distinctive character and takes unfair advantage of the Enterprise logo; and (iii) constitutes passing off. In addition, the parties have been engaged in 98 related trade mark disputes at registries around the world.
Likelihood of Confusion
Arnold J found in favour of Enterprise in respect of the first claim. The surrounding factors – most notably the similarity of marks, competing services, evidence of actual confusion from UK and foreign residents and the enhanced distinctiveness of the Enterprise logo in green and white – led him to the conclusion that use of the Europcar logo is likely to cause confusion amongst the relevant public.
The assessment of the first claim confirms that foreign residents who have become aware of the claimant's mark in their home country and encounter the defendant's sign in the UK may be included within the ambit of the "relevant consumer". This will have particular application where the goods and services involved have a strong transnational flavour, as is the case for the car rental market, when many consumers lease vehicles on holiday or on an overseas business trip. The manner in which the marks are used may also play an important role in deciding whether there is a likelihood of confusion. Enterprise's case was no doubt bolstered by the fact that its mark has an enhanced distinctive character through use in green and white and because Enterprise could point to evidence of actual confusion.
Detrimental to the distinctive character and takes advantage of the Enterprise logo
On the second claim, Arnold J noted the lack of evidence that use of the Europcar logo would cause or be likely to cause a change in the economic behaviour of the average consumer. Unwilling to speculate on this point, Arnold J found that use of the Europcar logo is unlikely to be detrimental to the distinctive character of the Enterprise logo. He also found that use of the Europcar logo does not take unfair advantage of the Enterprise logo, largely because there is a low level of similarity between the two and, for the most part, Europcar uses its mark with other elements of branding.
The third claim, for passing off, succeeded for essentially the same reasons as the first.
Before analysing the case in any detail, Arnold J did criticise both parties for treating the dispute as if it were a state trial. In his view the parties would be well advised to try to settle their differences on a global basis and to try promote their services using branding that is distinctive to each other's. Other multinational brand owners with worldwide disputes should certainly bear this in mind.
Arnold J was also critical of the procedure relating to survey evidence that has been laid down in M&S v Interflora (see here). That had resulted in an expensive two day hearing on the survey evidence but had not avoided the need to consider the surveys again at trial. To conclude, he merely thought the surveys were "confirmatory of the conclusion which I would in any event be minded to reach".