An Enterprising Victory, with Arnold J in the driving seat

Before "cut and paste", IP
judgments were shorter ...

This Kat welcomes a couple of his favourites back to the blog.  The first is long-time reader and occasional guest contributor Aaron Wood (Swindell & Pearson Ltd), whose warm smile and good humour are a cheery antidote to the dark, dark days of winter.  The second is Mr Justice Arnold, whose detailed and inevitably lengthy pronouncements on matters of IP law have truly earned the adjective 'Arnoldian' a permanent place in our working vocabulary.  Here Sir Richard provides the raw material, in terms of a brightly-illustrated full colour 227 paragraph judgment, while Aaron provides the write-up.  Incidentally, let no-one blame the judge for the length of the judgment, which could easily have been a good deal longer, had not the warring factions of Enterprise and Europcar spoiled the fun. As the judge noted at [2]:

"it is fair to note that both sides reduced the number of issues shortly before trial, Enterprise by abandoning an allegation that Europcar had intended to take advantage of the distinctive character and reputation of the Trade Marks and Europcar by abandoning a claim for revocation of two of Enterprise's UK Trade Marks for non-use, and that some points were abandoned during the course of the trial"

From the same paragraph we learn that, however much Arnold J provides for us to read, he has had to read a good deal more:

"There were 34 trial bundles, not including a number of "reserve" trial bundles available in court in case they were needed, of which five were in the event used. Enterprise called 14 witnesses and Europcar called 10 witnesses. Enterprise's skeleton argument ran to 155 paragraphs and Europcar's skeleton argument ran to 201 paragraphs [rather plump skeletons, Merpel thinks]. Enterprise's written closing submissions ran to 204 paragraphs and Europcar's written closing submissions ran to 100 paragraphs plus a 23 page annex".

Anyway, this is what Aaron has to say:

An Enterprising Victory

To what extent can context change the likelihood of confusion?  Does a survey ever help?  How do you consider the position where a proportion of the customer base comes from overseas?  These questions, among others, find a response in yesterday's judgment of High Court for England and Wales, Chancery Division, ruling of Mr Justice Arnold in Enterprise Holdings Inc v Europcar Group UK and Another [2015] EWHC 17 (Ch).

Background

Enterprise and Europcar are two heavyweights of the car rental market.  By 2012 Enterprise had 30.1% of the UK market, Europcar 26%.  Enterprise had, since its entry into Europe in 1994, used a logo consisting of a stylised letter “e” both as part of the word ENTERPRISE and also solus.  For its part Europcar typically used a logo which comprised the word EUROPCAR above a “horizon” element.   In 2012 Europcar moved to adopt a new logo which included a stylised “e”.  It was this development which led to the dispute between the parties.  Although Europcar alleged that use of the “e” was always together with the EUROPCAR logo, Enterprise discovered that use of the “e” solus did occur, together with use of the “e” with descriptive brands.  Enterprise alleged that a likelihood of confusion arose, that the use would take advantage of the repute in Enterprise’s marks, that it would be detrimental to the distinctive character of Enterprise’s marks and that the use could be prevented by virtue of the law of passing-off.

Left to right: Enterprise, Europcar

A complicating factor in the case was that Europcar had an arrangement with the owner of the rental brands ALAMO and NATIONAL, where ALAMO and NATIONAL fulfilled Europcar customers’ orders in North America and Europcar did the same for ALAMO and NATIONAL’s customers in the EMEA [Europe, the Middle East and Africa].  Enterprise purchased the business which owned NATIONAL and ALAMO, meaning that in the EMEA the customer desks had tri-branding ALAMO-EUROPCAR-NATIONAL, while in the US they showed ALAMO-ENTERPRISE-NATIONAL.

Europcar’s evidence on the Use of “e” logos in the Market

Europcar attempted to rely upon the existence of third party marks which included a lower “e” or included an element which resembled a lower case “e” and conducted investigations into a large number of companies.  From almost 4,000 registrations 400 companies were selected and evidence pertaining to use of 20 marks in the UK was provided.  Unfortunately for them, Arnold J found that the research did not separate the results into the relevant class, that the sector was dominated by a small number of vehicle rental companies and that, until Europcar adopted the e-moving logo, Enterprise was the only company in the sector which used a lower case 'e' logo on a green background.

The Surveys

Arnold J then introduced the surveys.  The permission to introduce the survey evidence was the subject of an earlier decision and the effect of the arguments regarding admissibility were highlighted:

“107. It can therefore be seen that 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.”

When he later came to consider the surveys he considered the attacks on them and then gave his view on the conclusion to be reached:

“191. The first main criticism is that the Surveys were artificial, because they involved stopping people in the street and asking them questions about their response to a stimulus. While I accept that this means that the Surveys have to be treated with some caution, I do not accept that it means that the Surveys cannot be relied on. The same criticism would apply to most commercial survey work. 

E-car brands: Enterprise
and Europcar are not alone ...

192. The second main criticism is that Europcar contends that, to have probative value, the Surveys should have been performed closer to the relevant date, which as noted above Europcar says is 6 December 2012, whereas the Surveys were carried out between October 2013 (OHIM Pilot Survey) and July-September 2014 (Main Court Survey). I do not consider this criticism has any substance, for a number of reasons. First, I have concluded that the first and second classes of use complained of by Enterprise fall to be assessed at later dates than December 2012. Secondly, it is common and almost inevitable for surveys to be conducted after the relevant date. This does not mean that they cannot cast light on the position at the relevant date, unless there has been some intervening change in the position. Thirdly, there is no evidence of a material change in circumstances between December 2012 and the dates when the Surveys were carried out. In this regard, it was put to Mr Malivoire that a substantial amount of TV advertising had taken place shortly before the carrying out of the Court Surveys and that this might have had some impact on the number of people who were aware of Enterprise at the time. This line of questioning ignored the fact that the TV advertising was just as substantial in 2011, 2012 and 2013. Fourthly, there is no reason to think that the results from the earlier Surveys were materially different from the results from the later Surveys by reason of the differences in the dates on which they were carried out. 

193. The third main criticism is that the respondents to the Surveys did not correspond to the relevant class of persons. As described above, respondents were asked whether they had rented a vehicle in the UK in the past 10 years or would consider doing so in the future. Europcar contends that they should have been asked whether they held a driving licence, how frequently they hired cars and which car rental companies they had heard of. Again, I do not consider this criticism has any substance. Vehicle rental is not a transaction that consumers enter into regularly. Some may only do so very occasionally, perhaps only every few years. Furthermore, it was desirable to include consumers who had not rented in the past, but intended to do so in the future. Thus I consider a sample consisting of people who have rented in the last 10 years or would consider doing so in the future is perfectly reasonable. It is noticeable that Mr Phillips criticised the sample on the basis that it would have been preferable to focus on a broader group consisting of all people who drive cars. Mr Malivoire disagreed with this, since that group would include people who did not rent cars, and Mr Phillips was not called. Counsel for Europcar submitted that it had not been shown that respondents were knowledgeable about the vehicle rental market, but the design of the survey was such as to include both those who were knowledgeable and those who were not. This favoured Europcar, not Enterprise, since the more knowledgeable the consumers were, the more likely it is that they would identify Enterprise's 'e' logo. 

194. The fourth main area of criticism concerns the questions which were asked in the Surveys. Europcar criticised both the main question asked in the OHIM Surveys ("Have you ever seen this before in relation to vehicle rental services?") and the main question asked in the Court Surveys ("What can you tell me about what you are looking at?"). It was put to Mr Malivoire that the OHIM question was flawed because, together with the recruitment question, it suggested to respondents that the symbol on the showcard was something connected with vehicle rental services. It was put to Mr Malivoire that the Court question was flawed because it failed to provide the respondents with any context. These criticisms are, of course, mutually inconsistent. In my view the second criticism is sounder than the first. As discussed above, it is clear that the effect of providing the respondents with the context of vehicle rental services was, as one would expect, to increase the percentage who mentioned Enterprise. But even if one takes just the results from the Court Surveys, a substantial proportion mentioned Enterprise. 

195. More generally, it was put to Mr Malivoire that the questions invited speculation and that it could be seen from some of the responses that respondents were treating the question as a quiz and guessing the right answer. He accepted that there was some evidence that a minority of respondents had approached the Surveys in this way, but he considered that most had answered the question in a simple and straightforward way. I agree with this assessment. In my view the questions, and in particular the main question in the OHIM Surveys, are neither leading nor inviting of speculation. 

196. The fifth main criticism concerned the percentages of respondents who mentioned Enterprise. It was put to Mr Malivoire that there was a degree of subjectivity in his analysis. He accepted this, but he pointed out that Mr Phillips had gone through all the responses to the Surveys and that there was very little disagreement between them as to how they should be categorised. Accordingly, there is nothing in this point. It was also put to Mr Malivoire that he had failed to use any control sample or benchmark. As he said, however, it is difficult to see the benefit of this. Suppose that the respondents had also been asked the same questions about the Mercedes star device and double the number had mentioned Mercedes: how would that assist the court? Mr Malivoire was also criticised for not offering any opinion as to the significance of the results he obtained. In my view it was entirely proper of him not to do so, since the significance of the results is a matter for the court. 

197. The sixth main criticism is that, at best, the Surveys were evidence of association rather than true trade mark distinctiveness. It is true that the Surveys do not demonstrate that consumers rely on the Enterprise 'e' logo as a badge of origin. But in my view they do demonstrate that a significant percentage of the relevant class of persons recognise the logo and associate it with Enterprise. Given that it is a logo, rather than the shape or other characteristic of a product or service, and given that it has clearly been used as a trade mark, there is no reason to think that this does not amount to evidence of distinctiveness. 

198. Conclusion. Overall, it seems to me that the Surveys are confirmatory of the conclusion which I would in any event be minded to reach in the light of all the other evidence in the case, namely that the current Enterprise 'e' logo (i.e. 497 in green and white) has an enhanced distinctive character as a result of the use which has been made of it in relation to vehicle rental services (which built on the use which Enterprise had previously made on its similar old 'e' logo).”

One is left to wonder whether the court will conclude that the surveys were of “real value” and justify the cost.  Given that the defendant had stated at the hearing regarding the admissibility of the survey evidence that its costs for responding to the evidence were broadly the same as those of contesting its introduction, one may conclude that it must have been for it to be worth the trouble of objecting to its introduction.

Likelihood of Confusion

Arnold J reproduced the usual summary of principles, taking the version seen as most accurate and approved by Kitchin LJ in Specsavers v Asda [here, noted by the IPKat here].

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."

He also noted that these are principles, not the law, and that Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Meyer Inc [1998] ECR I-5507 stated that  "the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion" (emphasis added).” He further repeated the need to consider not just “right-way-round” confusion, but also that consumers familiar with the defendant’s sign might think the claimant was connected with the defendant.

He further confirmed that the context of use must be taken into account (following Case C-533/06 O2 Holdings Ltd v. Hutchinson 3G UK Ltd [2008] ECR I-4231).  In the present case, this included the fact that enterprise made extensive use of green in its branding.

Average Consumer

Arnold J followed the reasoning of Kitchin LJ in Interflora (CA III) summarising the position as follows:

131. First, the average consumer is, as Lewison LJ put it in Interflora (CA I) at [44] and [73], a "legal construct". 

132. Secondly, the average consumer provides what the EU legislature has described in recital (18) of ... Directive 2005/29 ... concerning unfair business-to-consumer commercial practices in the internal market as a "benchmark". By assessing matters from the perspective of a consumer who is reasonably well-informed and reasonably observant and circumspect, confusion on the part of those who are ill-informed or unobservant is discounted. In this way, as Kitchin LJ explained in Interflora (CA III) at [113], the court is able "to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market". 

133. Thirdly, as Lewison LJ stressed in Interflora (CA I) at [45]-[56], in a case concerning ordinary consumer goods and services, the court is able to put itself into the position of the average consumer without requiring expert evidence or a consumer survey. … 

134. Fourthly, the average consumer test is not a statistical test in the sense that, if the issue is likelihood of confusion, the court is not trying to decide whether a statistical majority of the relevant class of persons is likely to be confused. 

135. Fifthly, the average consumer test does not amount to a single meaning rule or a rule restricting consideration to the reactions of a single hypothetical person. … 

136. Sixthly, if it is shown that the claimant's trade mark has a distinctive character, or an enhanced distinctive character, amongst a significant proportion of the relevant public, then it is necessary to consider the impact of an allegedly infringing sign upon the proportion of the relevant class of persons to whom the trade mark is distinctive. This does not require the court to assume that the mark is equally distinctive to all such persons, however. 

137. Seventhly, the "relevant public" (an expression which is also frequently used by both the Court of Justice and the General Court) of whom the average consumer is representative normally consists of people with a spectrum of attributes such as gender, age, ethnicity and social group. But if there is evidence that the trade mark is more likely to have acquired distinctive character amongst one demographic segment of the relevant class of persons than another, it is proper to take that into account. 

138. Eighthly, the level of attention exercised by the average consumer depends on the nature of the goods or services in issue.  

He then considered a further point, being whether one could consider consumers from other countries (on the basis that a proportion of the consumers of travel cars would be overseas residents visiting the UK).   He concluded that he should, but warned:

142.  … the court should treat this part of the relevant public with some caution, since it will inevitably be harder for the court to put itself into the position of such consumers than into the position of consumers resident in the UK

Applying this, Arnold J concluded that the level of attention would vary amongst consumers – sometimes considered, other times in a rush.  He balanced this as follows:

177. There are two ways in which one might give effect to these considerations. The first is by positing that the average consumer represents consumers with a range of levels of attention, from moderately high to relatively low. The second is by positing that the average consumer has a single, average level of attention. 

178. Counsel for Europcar pointed out that in Case C-361/04 P Claude Ruiz-Picasso v OHIM [2006] ECR I-643 the Court of Justice held as follows: 

"38. … the Court has already held that, for the purpose of an overall assessment of the likelihood of confusion, it must be borne in mind inter alia that the average consumer's level of attention is likely to vary according to the category of goods or services in question (Lloyd Schuhfabrik Meyer, paragraph 26).

39. Therefore, the Court of First Instance was fully entitled to hold, in paragraph 59 of the judgment under appeal, that, for the purposes of assessing, as provided for in Article 8(1)(b) of Regulation No 40/94, whether there is any likelihood of confusion between marks relating to motor vehicles, account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods. 

40. Where it is established in fact that the objective characteristics of a given product mean that the average consumer purchases it only after a particularly careful examination, it is important in law to take into account that such a fact may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made. 

41. As to the fact that the relevant public is also likely to perceive such goods and the marks relating to them in circumstances unconnected with any act of purchase and to display, where appropriate, a lower level of attention on such occasions, the Court of First Instance was also fully entitled to observe, again in paragraph 59 of the judgment under appeal, that the existence of such a possibility does not prevent the taking into account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between different goods in the category concerned. 

42. First, it is clear that, whatever the goods and marks at issue, there will always be situations in which the public faced with them will grant them only a low degree of attention. However, to require that account be taken of the lowest degree of attention which the public is capable of displaying when faced with a product and a mark would amount to denying all relevance, for the purpose of an assessment of the likelihood of confusion, to the criterion relating to the variable level of attention according to the category of goods, noted in paragraph 38 of this judgment. 

43. Second, as observed by OHIM, the authority called upon to assess whether there is a likelihood of confusion cannot reasonably be required to establish, for each category of goods, the consumer's average amount of attention on the basis of the level of attention which he is capable of displaying in different situations." 

179. I do not interpret this as prohibiting the court from taking into account the fact that, in circumstances such as those described above, consumers display a range of levels of attention. 

180. For his part, counsel for Enterprise pointed out that in Case T-36/07 Zipcar v OHIM [2008] ECR II-96 the General Court considered the average consumer's level of attention concerning, among other things, car rental services. It held at [47]: 

"It is true that the level of attention of the average consumer is likely to vary according to the category of goods or services in question (see Top iX, paragraph 45 and the case-law referred to). However, in the present case, there is no basis for the inference that the degree of attention of the relevant public is particularly high when a car rental supplier is being chosen. There are no factors present which encourage a high degree of attention, such as a high price or the technological nature of the service. Consequently, the applicant's argument that the relevant public is particularly attentive because of the nature of the services covered in the present case must be rejected." 

181. Again, I do not interpret this as prohibiting the court from taking into account the fact that consumers display a range of levels of attention. What does seem clear is that, if one takes the second approach described in paragraph 177 above, as the General Court appears to have done, the average level of attention should not be regarded as high.
182. In my view it is more realistic, and therefore preferable, to recognise that consumers in the field of vehicle rental services have varying levels of attention, just as they vary in gender, age, social grouping, ethnicity and residence. I do not consider that it would make any difference to the outcome, however, if one posited an average consumer with a single, average level of attention, namely a medium level of attention.

Inherent and Acquired Distinctiveness of Enterprise’s “e”

Arnold J found that, although used widely overall, in the context of vehicle rental services there was not wide use of the “e” logo.  In relation to acquired distinctiveness, he considered each of the considerations mentioned in Case C-375/97 General Motors v Yplon.  It seems he paid particular heed to the unchallenged evidence of two witnesses of Enterprise, one of whom had 34 years’ experience of the vehicle rental market.

Actual vonfusion and likelihood of confusion

Arnold J noted that there had been a large amount of actual confusion, and a growing amount since Europcar adopted the new logo.  Faced with this and his conclusion that the marks were similar, his conclusion was that much of the confusion could be attributed to the new logo and that all three types of use by Europcar (e alone, e with descriptive names and e together with EUROPCAR) infringed, but expressed the view that without the instances of actual confusion he would have hesitated to find in favour of Enterprise on the second and third type of use.  There had been confusion prior to this due to (amongst other things) the shared use of green and the fact each had marks of similar length.  He rejected Europcar’s explanation that the confusion arose because of the tie-up with NATIONAL and ALAMO.  

Reputation, unfair advantage and detriment to distinctive character

Arnold J concluded that there was a reputation within the EU for the mark.

On the question of unfair advantage, he concluded that this case was very different from the recent Jack Wills case [here, noted on this weblog here].  The similarity was lower, Europcar tended to use it with other material and Europcar was a leading player in the same market rather than “a retailer trying to boost sales by adopting a feature of branded goods.”  If there was no likelihood of confusion he would conclude that there was no unfair advantage.

He found however that there was no detriment to distinctive character.  Dealing with the argument that the existence of this other logo would “dilute” Enterprise’s mark he said:

222. I confess to some sympathy with this argument. Nevertheless, I am unable to accept it. Assuming no likelihood of confusion, what is missing is evidence of any change in the economic behaviour of the average consumer or of a serious likelihood of this. As counsel for Europcar accepted, the economic behaviour of consumers can be affected via their perceptions of trade marks. As he also accepted, the Court of Justice has made it clear in Environmental Manufacturing that it is legitimate for the court to draw inferences from the facts and probabilities of the situation. As he submitted, however, it is equally clear that it is not permissible for the court simply to speculate. The dividing line between legitimate inference and impermissible speculation is not always easy to discern. In the present case, however, it seems to me that Enterprise's argument falls on the wrong side of the line.

Passing Off

Given his findings on reputation, enhanced distinctiveness and likelihood of confusion, he concluded that passing off would also occur.