The 'enhanced distinctive character' of trade mark helps brand owner prove infringement

Mr Justice Arnold determined that car rental company Europcar's use of its logo "has caused actual consumer confusion" with Enterprise's rival logo, for which it owns Community trade mark rights. Europcare is therefore liable for trade mark infringement and for 'passing off', he ruled.

Enterprise had complained about Europcar's use of its logo in three separate contexts. It claimed its rights had been infringed by Europcar's use of the logo on its own, in combination with "descriptive words" denoting Europcar's secondary brands, and in combination with the word 'Europcar' and strapline 'moving your way'.

"Considered as a whole, I am satisfied that the evidence establishes confusion as to trade origin, and not merely mistakes caused by accidents, lack of care and so on," Mr Justice Arnold said in his judgment. "Such confusion has been mainly, if not exclusively, caused by [Europcar's use of its logo in combination with the wording of its secondary brands, and in combination with the word 'Europcar' and strapline 'moving your way'] since there has been very little [of the logo on its own] to date."

The judge said his "impression" is that some of the confused consumers are based in North America but that this represents "far from all" of those confused by the use of the Europcar logo. However, he said the evidence is "unclear" on the issue.

Under the EU's Community Trade Mark Regulation, trade mark owners generally have the right to restrict the use of signs that are identical or similar to the ones they hold rights to for identical or similar goods or services that the a protected mark covers where the public is likely to be confused and link ownership of the sign to the trade mark holder.

In his judgment, Mr Justice Arnold came to his conclusions despite admitting that there was "little hard evidence of consumers explicitly stating that they have been confused as a result of seeing [Europcar's] logo and mistaking it for the Enterprise … logo", and finding that there was "not a great deal" of similarity between the rival logos.

The judge also said that "anyone who was able to compare the two logos" would not mistake them for one another and that the contexts in which Europcar uses its logo "tend to reduce the likelihood of confusion" between its logo and the Enterprise mark.

However, Mr Justice Arnold said that someone with only "an imperfect recollection of the Enterprise logo" who viewed the Europcar logo "could mistake the latter for the former, at least in the absence of any differentiating context".

He also said there had been an "undercurrent of confusion" between Enterprise and Europcar before Europcar began using its logo in late 2012 and that this was a factor he had to consider when assessing whether there was a likelihood of confusion between the Europcar logo and Enterprise's trade mark.

Mr Justice Arnold said that evidence gathered from consumer surveys about the Enterprise and Europcar logos had confirmed his opinion that Enterprise's mark "has an enhanced distinctive character as a result of the use which has been made of it in relation to vehicle rental services".

"The case demonstrates the commercial importance of brand investment," intellectual property law expert Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said. "Given that many of the factors commonly taken into account in assessing the confusion question seemed to go against Enterprise, the enhanced distinctiveness of Enterprise’s trade mark, gained through its extensive use, seemed to swing the decision in its favour."

"It is also worth noting the successful use of surveys in this case by Enterprise in the post Interflora world, albeit in an attempt to show distinctiveness of the mark and not confusion," she said.

Previous case law has established that where trade marks are found to have either a distinctive character or an enhanced distinctive character among a significant proportion of the relevant public, then the views of the type of people who find those marks distinctive must be sought as to the impact on them of an allegedly infringing sign.

This test is part of the wider test, also established by previous cases, which ensures that an assessment for 'likelihood of confusion' between a trade mark and an allegedly infringing sign is based on what the 'average consumer' thinks about the issue.

Mr Justice Arnold, however, refused Enterprise claims that Europcar's use of its logo had caused detriment to the distinctive character of its mark.

"What is missing is evidence of any change in the economic behaviour of the average consumer or of a serious likelihood of this," the judge said.