In the first High Court trade mark judgment of the year, Mr Justice Arnold handed down his decision in Enterprise Holdings Inc v Europcar Group UK and Another  EWHC 17 (Ch) on 13 January 2015. While the case did not raise any particularly complex issues, it is worthy of comment for the number of evidential issues which the judgment addressed.
Enterprise and Europcar both offer vehicle rental services. In 1969, in the USA, Enterprise began using a stylised 'e' both as a standalone logo and, later, as part of the word Enterprise. In 1994, it commenced business in Europe and by 2012 it had 30.1% of the UK market in vehicle leasing. Enterprise has registered UK and Community trade marks for a stylised lower case 'e', some of which are in black and others which have a green background with a white letter 'e'.
Europcar is one of Enterprise's main competitors. By 2012, Europcar had 26% of the UK market in vehicle leasing. In December 2012, Europcar began using a stylised letter 'e' in green on a green background, shown above. It uses its 'e' logo ("Europcar's 'e' sign") either alone, in combination with descriptive words for secondary brands such as "Chauffeur" or in combination with the word Europcar and often the strapline "moving your way."
Enterprise issued proceedings against Europcar for trade mark infringement under Articles 9(1)(b) and (c) of the Community Trade Mark Regulations and passing off.
The claim included three UK trade marks and seven Community trade marks. However, three of the Community trade marks were the subject of cancellation proceedings in Office for Harmonization in the Internal Market (OHIM) and as a result the claim in relation to these three marks was stayed. Enterprise therefore focused its case on Community Trade Mark No 9374497, shown above, which is registered in black and white in relation to "vehicle rental and leasing services".
Arnold J actually began the judgment by criticising both parties. The case involved 34 trial bundles (only five of which were used), 24 witnesses, a series of satellite disputes over surveys and the admissibility of evidence and ancillary trade mark disputes in 98 trade mark registries around the world. Arnold J commented:
"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…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."
Having made his feelings quite clear to the parties, Arnold J went on to consider a number of evidential issues that have played a part in recent UK and EU court decisions.
Expert and Trade Evidence
Europcar objected to some elements of the witness statements on the grounds that they constituted opinion evidence from non-experts as to the likelihood of confusion and dilution in relation to everyday consumer goods and services. Although the objections were withdrawn, Arnold J chose to comment on the issue. He described "trade evidence" as evidence from witnesses in the trade who are independent of the parties and can give evidence as to the manner of the sale of the goods, the relevant consumer and any instances of actual confusion they have encountered. The controversial questions, as to whether such witnesses can go further and express views as to the likely reaction of customers and whether such views are expert evidence and admissible, have recently been argued before the Court of Appeal in Fenty v Arcadia Group Brands Ltd. The decision is awaited. In the current case, Arnold J did not regard the witness evidence as "trade evidence" and, although it had "shaded into expressions of opinion", his view was that it was proper evidence of fact.
However, he did approach the evidence from the branch managers as to the reactions of customers with some caution. It was accepted that some of that evidence was hearsay and branch managers did not generally know what information was available to the customers and informed their reactions.
In support of its case as to enhanced distinctiveness, reputation and or goodwill, Enterprise applied for leave to adduce three surveys in evidence. Two had been prepared for proceedings before OHIM and one was a pilot survey. Enterprise also sought leave for a full survey for the purpose of the current proceedings. In applying the Court of Appeal guidance set down in Interflora v Marks & Spencer as to assessing the "real value" of the surveys, Morgan J had concluded at an interim hearing that the existing surveys should be adduced and the full survey carried out despite Europcar's objections. Arnold J considered the surveys but clearly remained unconvinced of their real value:
"…the result of the procedure prescribed in Interflora (CA I) and Interflora (CA II) has been to put the parties in the present case to the cost (amounting to some £215,000) of a two-day hearing in advance of trial which has not saved any costs at trial and to require the court to consider Europcar's criticisms of the surveys twice."
He later commented in the judgment that the surveys were "confirmatory of the conclusion which I would in any event be minded to reach in light of all of the other evidence in the case…".
Overseas Residents and the Average Consumer
In considering the question of trade mark infringement under Article 9(1)(b) and (c) of the Regulations, Arnold J came to the question of the average consumer. The nature of the vehicle rental business is such that a significant number of the consumers using the services of the parties in the UK will be from overseas and leasing the vehicles while on holiday or a business trip. The issue arose as to whether the relevant public (which the average consumer represents) can include overseas residents? As the services are provided in the UK and the market in question has a "transnational character", Arnold J concluded that it would be wrong to exclude overseas residents from the relevant public. He did, however, state that it would be more difficult for the court to place itself in the shoes of such consumers.
Black and White Registrations
Arnold J applied the Court of Justice of the European Union (CJEU) ruling in Specsavers v Asda Stores. Where a Community trade mark is registered in black and white, but has been used extensively in a particular colour such that it has become associated with that colour in the minds of a significant portion of the public, then the colours used by the alleged infringer are relevant to the global assessment of the likelihood of confusion. Arnold J concluded that Enterprise had made extensive use of the colour green.
Europcar argued strongly that the context of its use, namely the use of Europcar's 'e' sign in conjunction with the Europcar brand or secondary brands, negated any likelihood of confusion. While Arnold J agreed that the context could indeed reduce the likelihood of confusion, it did not do so in this instance. The use of secondary brands with Europcar's 'e' sign would provide "little differentiation". Further, the use of the Europcar name and strapline with Europcar's 'e' sign did not change the fact that Europcar's 'e' sign played its own independent role in Europcar's branding, and served as a unifying element between the various brands' uses.
Arnold J held that Europcar had infringed the Enterprise trade mark under Article 9(1)(b). Despite the differences between Europcar's 'e' sign and the trade mark, the inherent and enhanced distinctive character of the trade mark and the average consumer's varying/neutral level of attention were such that there was a likelihood of confusion. The evidence of actual confusion was the conclusive factor in the decision. Europcar's own evidence showed that between January 2013 and October 2014, Europcar customers mistakenly got on to the Enterprise shuttle buses at Heathrow, rather than the Europcar shuttle buses, on at least 529 occasions. Although the confusion was "wrong way round" confusion, it was still evidence that the logos were confusingly similar. Arnold J also concluded that Europcar's actions constituted passing off.
However, Arnold J did not find infringement under Article 9(1)(c). Whilst he acknowledged Enterprise's reputation in the trade mark, Arnold J was not persuaded that Europcar's use of its 'e' sign took advantage of the distinctive character or repute of the trade mark, let alone unfair advantage.
This decision perhaps serves as a salutary reminder to entities which compete directly: they should strive to ensure that their branding is sufficiently distinct from each other to avoid confusion among real consumers - where appropriate including when those consumers have jet-lag!