Enterprise Holdings Inc v Europcar Group UK Ltd & Anor
2014
CHANCERY DIVISION
United Kingdom
CORAM
- MR JUSTICE MORGAN
Areas of Law
- Intellectual Property Law
2014
CHANCERY DIVISION
United Kingdom
CORAM
AI Generated Summary
Enterprise Holdings Inc alleged Europcar infringed its trade marks and committed passing off. The court, after considering objections regarding survey methodologies, allowed Enterprise to use survey evidence to prove distinctiveness of its marks. The court analyzed multiple legal principles guiding the use of such evidence and ensured its relevancy and validity for the trial.
Judgment
MR. JUSTICE MORGAN:
This is an application by the claimant, Enterprise Holdings Inc, for permission to re-amend its Particulars of Claim. The claim is for trade mark infringement. The claimant relies upon a number of marks. Some are registered in the United Kingdom and others are Community trade marks. For present purposes, it is the Community trade marks which are relevant.
In very brief summary, the claimant alleges past infringement of the Community marks and a threat of future infringement. The claimant seeks an injunction in relation to threatened future infringement and damages or an account of profits in relation to past infringement.
The application for permission to re-amend the Particulars of Claim, which has given rise to strenuous opposition, relates to the claimant’s pleading as to past infringement in particular. The Particulars of Claim have been amended once with the consent of both defendants, Europcar Group UK Limited and Europcar International SASU. The first of those defendants is a company registered in England and Wales and the second defendant is a company registered in France. These amendments, the red amendments, received the consent of both defendants on 24 th October 2013 and the defendants’ Defence and Counterclaim was amended in consequence of the claimant’s red amendments. As will be seen, I consider that the red amendments are significant when considering what to do on the present application.
In the course of the argument, I have been taken to the Particulars of Claim as originally served, then to the first set of amendments (the red amendments) and then to the proposed re-amendments which are in green ink. I have found it helpful to look at the pleadings as they evolved in determining what I should do on this application. In that way, I will begin by considering the original Particulars of Claim.
The original Particulars of Claim identified the Community marks relied upon. It is common ground that a Community trade mark has a unitary character which has equal effect throughout the Community. That is provided by Article 1(2) of the Community Trade Mark Regulations. Paragraph 17 of the original Particulars of Claim is important. The opening words read as follows:
“The Trade Marks have an enhanced distinctive character and/or a reputation as a result of the use that has been made of them both in the United Kingdom and elsewhere in the EU. In addition to providing an enhanced distinctive character and/or reputat