20 January 2015

Car wars: Enterprise drives off Europcar in fight for "e" trade mark

In proceedings so lengthy and costly they were described as "a state trial" by the judge, car rental rivals Enterprise and Europcar have squared off in a fight for the right to use competing "e" logos (reproduced below: Enterprise on the left, Europcar on the right).

Enterprise is the current market leader in the UK, with a turnover of over £450m. It has several UK and Community trade marks protecting its logo, which has been in use in its current form since 2006 (supported by intensive advertising), with an older, similar logo dating as far back as 1967.

At the conclusion of an initiative to improve brand recognition, Europcar (the market leader until 2008) announced the adoption of its new "e" logo at the end of 2012. The logo was subsequently used either alone, in combination with descriptive sub-brands such as "Prestige" or in combination with the word "Europcar" and often the strapline "moving your way".

Enterprise sued for both trade mark infringement and passing-off in June 2013, a key issue being the extent to which relevant consumers were likely to be confused by the respective logo use and, as a result, associate Europcar with Enterprise. And in a recently published decision, the judge found that there was such a likelihood of confusion and, to that extent, decided in favour of Enterprise.

Now you may think, when comparing the logos above, that they are not that similar, and that the judge's conclusion is therefore somewhat surprising. You might find it even more surprising given that the judge himself found there was "not a great deal" of similarity between the two logos.

However, a legal analysis of the question of trade mark infringement is a global exercise, taking into account not just the similarity of the marks, but also the similarity of the respective services, the distinctiveness of the allegedly infringed mark and the nature of the average consumer for the goods or services in question.

In this case the services were identical (car rental); the Enterprise "e" was both inherently distinctive and (as demonstrated by survey evidence) had acquired additional distinctiveness through intensive use; and the average consumer (including foreign visitors renting cars in the UK) was frequently hurried and therefore not paying particularly close attention to the differences between the logos. Moreover there was some compelling evidence of actual confusion, including Europcar customers mistakenly getting on Enterprise shuttle buses at Heathrow, and customers with Enterprise reservations mistakenly going to Europcar desks or branches to obtain their cars.

On the basis that there was a likelihood of confusion, Enterprise's claims for trade mark infringement and passing off therefore succeeded. However, its claims that Europcar's logo was detrimental to Enterprise's mark, or had taken unfair advantage of it, failed.
An appeal seems likely, but as the judge was at pains to point out:

"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."

Many potential litigants in trade mark proceedings could do worse than take those comments on board.

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