Vehicle Leasing Wars - Enterprise's injunction limited to the UK

13 March 2015


Arnold J. decides what relief Enterprise is entitled to for infringement of its Community Trade Mark.

Background

In our alert on 15 January 2015, Kate Swaine discussed Arnold J's. judgment in Enterprise Holding Inc. v Europcar [2015] EWHC 17 (Ch), in which he found that Europcar had infringed Enterprise's Community Trade Mark consisting of a logo containing a stylised 'E'.

In a further judgment, on 11 February 2015 (Enterprise Holding Inc. v. Europcar Group UK Limited [2015] EWHC 300 (Ch)), the judge has now dealt with the specificity and geographical scope of the injunction to which Enterprise is entitled, costs, and whether Enterprise is entitled to a publicity order under Article 15 of the Enforcement Directive.

The court's assessment and decision

Specificity of the Injunction

The question was whether the injunction to which Enterprise was entitled should be in the general form, simply an injunction to restrain Europcar from infringing the Trade Mark, or whether it should be in a form which specified the acts which Europcar was enjoined from carrying out.

Arnold J dealt with this question at some length in Interflora v Marks and Spencer plc [2013] EWHC 1484 (Ch). He considered, among other things, whether an injunction in the general form could be proportionate as required by Article 1(2) of the Enforcement Directive and concluded that, in an appropriate case, a general injunction could certainly meet the requirement.

Following a line of cases starting with the Court of Appeal's judgment in Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9, the judge concluded that the starting point was the grant of an injunction in general form, although where appropriate, the injunction can be specific to the acts restrained. For example, a general injunction would be inappropriate in a confidential information case.

In the Enterprise case, there were no factors pointing to a requirement to make the injunction specific.

Geographical scope of the Remedies

In Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-2801, the Court of Justice of the European Communities (CJEU) considered questions sent to it from the Cour de Cassation about the geographical scope of an injunction to be granted pursuant to Article 98 of the Trade Mark Regulation (now Article 102 of the codified Regulation). The case was based on Article 9(1)(a) of the Regulation.

The CJEU ruled that normally an injunction for infringement of a Community Trade Mark would be Community-wide. This was necessary to ensure uniform protection of the trade mark and to avoid conflicting decisions in different Member States. However, there could be exceptions. The CJEU gave the following two examples:

  1. Where the acts of actual or threatened infringement are limited to a single Member State, particularly where the claim is itself so limited; and
  2. Because the defendant establishes that, in some Member States, the functions of the trade mark are not liable to be affected, for example on "linguistic grounds".

As Arnold J. points out, this makes sense in an Article 9(1)(a) case, where, at least arguably, the burden of proof is on the defendant to show that the functions of the trade mark will not be affected by his actions In most cases, this will mean that the defendant must show that confusion is not likely to occur. However, in a case based on Article 9(1)(b) or (c), the burden of proof that the functions of the trade mark will be adversely affected lies firmly on the claimant.

Accordingly, Arnold J. expresses the view, but does not formally decide, that in an Article 9(1)(b) or (c) case it would not be right to require the defendant to prove that his actions are not likely to affect the functions of the mark. He draws support from the position in relation to financial remedies. If the claimant is entitled to a pan-European injunction, why should he not be entitled to pan-European damages? So, if the claimant was entitled to a pan-European injunction in an Article 9(1)(b) or (c) case, a defendant would logically find himself required to prove an absence of confusion in Member States other than the forum state to avoid paying damages for actions carried out in those States.

In the end, the decision turned on the particular way the case had proceeded.

Originally, Enterprise's pleadings relied only on acts of alleged infringement committed in the United Kingdom. They had sought to amend to "in the UK and/or elsewhere in the EU". At an interim hearing Morgan J. allowed Enterprise to amend to "in the UK and/or France", but did not allow them to plead "elsewhere". At the trial, at the close of the evidence Enterprise abandoned any reliance upon acts of infringement committed in France.

Arnold J. concluded that this was a case in which Enterprise restricted its claim territorially to the United Kingdom and that accordingly, the remedies should be limited to the United Kingdom. He did give Enterprise the comfort of pointing out that neither his main judgment nor this judgment created any res judicata with regard to possible proceedings in another Member State. The court in another Member State could take a different view!

Publicity Order

In Samsung Electronics UK Ltd v Apple Inc. [2012] EWCA Civ. 1339, the Court of Appeal held that making a publicity order pursuant to Article 15 of the Enforcement Directive is not automatic. It depends on the circumstances of each case.

Arnold J. considered that this was an appropriate case to make a publicity order. He was particularly influenced by the fact that in his main judgment he had found that actual confusion on the part of UK consumers had been proved. The judge considered that the order should last for three months, not the one month that Europcar said was appropriate, because vehicle rental services are only used sporadically by consumers and many would miss the notice if it only lasted for one month.

Conclusion

The CJEU's decision in the DHL case appears to make the position in an Article 9(1)(a) case reasonably clear. The claimant gets a pan-European injunction (and financial remedies) unless he himself has limited the territorial scope of the claim, or unless the defendant establishes that there are Member States where confusion would not occur, or, less likely, that the other functions of the mark would not be affected.

The position in Article 9(1)(b) or (c) cases is less clear. It seems to be the judge's view that the remedies should be limited to those countries where there is evidence that the functions of the trade mark will be adversely affected. However, as the judge himself points out, the requirements for uniformity of protection and avoidance of conflicting decisions could still militate in favour of the grant of pan-European relief in such a case.


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