Making trademark infringement cases – Enterprise v. Europcar
Making trademark infringement cases should always start with a letter, then the follow up a formal document in the appropriate legal format setting out the causes of action are crucial and should not be attempted lightly. This formal document making trademark infringement cases is called a pleading.
There are different styles and methods of preparing these pleadings. Once the substance has been covered then differences are mainly down to style. In the recent case of Enterprise v Europcar incidentally addressed the subject of how pleadings are prepared when making trademark infringement cases.
Are there occasions when a matter calls for pleadings by the so-called “scatter-gun method”? If there are several possible causes of action, no matter how remote, why not fire off four or five in one action? The results can be very interesting, right? Arnold J does not agree, as his judgment implies that the court will take a dim-view of this approach. It seems using a high powered rifle with the telescopic sight approach to pleadings will stand one in better stead.
The facts of the case are that Enterprise and Europcar are major competitors. Enterprise brought a claim against Europcar claiming that Europcar had infringed no less than 10 registered trademarks and community marks and passing off regarding the e-moving (the e is stylised) logo. Europcar applied to register the logo and Enterprise opposed the application on relative grounds, the opposition proceedings were pending before the Opposition Division of OHIM. Enterprise had also opposed applications by Europcar in 31 countries. There were a total of 98 trademark disputes around the world between Europcar and Enterprise.
My interpretation of one aspect of Arnold J’s judgment, which was handed down on 13 January 2015, is that it appears to imply that the court was irritated by the scatter-gun method of endless bundles of evidence and proliferation of issues between the companies (although most of the issues were abandoned before trial). There was also comment as to the very long skeleton arguments and closing submissions. Although these were just general comments they are worth noting regarding the strategy to adopt when making trademark infringement cases.
The other issues raised by the judgment are:
The disputes regarding survey evidence and admissibility of evidence. The judgment highlighted that survey evidence was important because it helps to establish whether a mark has acquired distinctive character. Additionally, that survey evidence can establish both likelihood of confusion and the distinctive character. Previous cases have indicated that survey evidence will not be allowed in trademark infringement cases to prove likelihood of confusion
Arnold J commented on the prudence of agreeing to co-exist instead of endless global disputes which were both expensive, time-consuming, and neither served the interests of consumers or the trademark holders.
3. Likelihood of confusion, reputation and distinctive character
The case considered:
“COUNCIL REGULATION (EC) No 40/941 of 20 December 1993 on the Community trade mark
Article 9: Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.”
Under Art 9(1)(b) of the Regulation – that the infringement must give rise to a likelihood of confusion on the part of the public. The likelihood of confusion in Article 9(1)(b) of the Regulations should be interpreted with the standard of principles adopted by the Trade Mark Registry which was cited by Kitchin LJ in Specsavers International Healthcare Ltd v. Asda Stores Ltd  EWCA Civ 24 2012, FSC 19 (Specsavers (CAI)) at . The judgment then considered “likelihood of confusion” in further depth in light of several cases including Comic Enterprises Ltd v. Twentieth Century Fox  EWHC 185 (Ch),  FSR and Case C-292/00; Davidoff & Cie SA v Gofkid Ltd  ECR 1-389 and Case C-408/01 Adidas – Salomon Ag v Fitnessworld Trading Ltd  ECR 1-12537
Ultimately the judgment concluded that Enterprises claim for infringement succeeded in relation to use of the e-moving logo with respect to Article 9(1)(b), and on its claim for passing off. However, Enterprise did not succeed with respect to its claim regarding distinctive character under Article 9(1)(c).
So note to self-
(i) Make sure that causes of action are precise, skeleton arguments and evidence are concise and to the point when making trademark infringement cases.
(ii) Remember that survey evidence can be used to establish a likelihood of confusion. Additionally, one can distinguish between survey evidence to demonstrate distinctiveness and survey evidence for establishing a likelihood of confusion.
(iii) Encourage clients to enter into coexistence agreement rather than litigate where applicable.
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