30 Jun 2015Enterprise has used a stylised 'e' in Europe since 1994 (below left) and has a registered UK and Community trade mark. Europcar is one of Enterprise's main competitors. It started to use a stylised 'e' in 2012:
Enterprise issued proceedings against Europcar for trade mark infringement and passing off. Use of an identical or similar mark for identical or similar goods and services to a registered trade mark constitutes trade mark infringement:
- if the use creates a likelihood of confusion on the part of the public; or
- where the trade mark has a reputation and the use of it takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Although the issues in this case were not particularly complex, it provides a useful illustration of trade mark protection in practice.
Previous cases involving Interflora and Marks & Spencer prescribed strict guidelines for the use of survey evidence in trade mark cases. Such evidence may now only be admitted where (i) it is likely to be of real value and (ii) the likely value of the evidence justifies the cost of conducting the surveys. This test sets out a high bar and will significantly reduce the number of cases where surveys can be used as evidence of consumer confusion and/or distinctiveness of a trade mark. However, in an earlier hearing between Enterprise and Europcar, a High Court judge had exercised his 'gatekeeper' role to grant permission to Enterprise to use consumer survey evidence in an attempt to demonstrate the distinctiveness of its mark.
In the full hearing, Mr Justice Arnold held that the survey evidence showed a significant proportion of the public associated the 'e' logo with Enterprise and determined that Enterprise's mark has "an enhanced distinctive character" gained through its extensive use. However, he indicated his skepticism regarding the true value of the survey evidence stating that the surveys were "confirmatory of the conclusion" he would in any event have reached.
Evidence was also produced to show that Europcar customers have mistakenly boarded the Enterprise shuttle buses at Heathrow. Justice Arnold also determined that Europcar's use of its logo has "caused actual consumer confusion" with Enterprise's trade mark.
The Judge did not agree with Enterprise's claims that Europcar's logo had caused detriment to the distinctive character of Enterprise's trade mark. He felt that there was no evidence to show that the similarity between the logos would "change the economic behaviour of the average consumer". So while the logos might be confusing, it wouldn't result in a customer choosing Europcar over Enterprise.
Given the likelihood of confusion, Europcar was found liable for trade mark infringement and 'passing off'.
This case shows how trade mark laws can provide practical protection for brand owners who use their trade mark consistently and extensively. Arguably here the two marks are not that similar; Justice Arnold commented that there was "not a great deal" of similarity between the two logos. However, he pointed out the need to look at the complete, or "global", picture and context. It is necessary to take into account not only the similarity of the marks but also:
- the similarity of the respective services, which were identical in this case and therefore increased the likelihood of confusion;
- the distinctiveness of the allegedly infringing mark. As set out above, the judge here held that the survey evidence helped to demonstrate enhanced distinctiveness; and
- the nature of the average consumer for the relevant goods or services. Car rental customers are sometimes rushed and not paying full attention and a significant proportion come from overseas.