Enterprise Holdings Inc v Europcar Group UK Ltd & Anor

Permission to amend pleadings should be determined objectively and fairly, by reference to the case previously advanced and the prejudice or procedural unfairness created by the proposed amendment. Where an amendment clarifies an existing allegation and the opposing party has long understood the substance of the case, it may be permitted without amounting to a major change. The court should confine the amendment to matters sufficiently particularised and should not allow a general, unparticularised expansion of the issues shortly before trial. A pleading concerning past infringement must be read distinctly from one concerning threatened future infringement. For Community trade marks, an injunction will ordinarily have pan-European effect, subject to the recognised exceptions.

The claimant brought trade mark infringement proceedings concerning United Kingdom and Community trade marks. It alleged past infringement, threatened future infringement, and sought damages or an account of profits together with injunctive relief.

The claimant had amended its Particulars of Claim with the defendants’ consent. It then sought permission to re-amend them, principally to clarify that specified uses of the defendants’ sign in the United Kingdom and France formed part of the allegations of past infringement. The defendants opposed the application and argued that the amendment would improperly widen the claim and exceed the second defendant’s submission to the jurisdiction.

The central issues were the proper construction of the existing pleading, the scope of the proposed amendment, and whether the amendment should be permitted at that stage of the proceedings.

1. The application for permission to re-amend was allowed in part. The original pleading objectively confined the pleaded acts of past infringement principally to the United Kingdom. The allegations of threatened future infringement, however, were not so confined.

2. The court treated the pleading as a whole, while distinguishing past infringement from threatened future infringement. References to the European Community in the relief and consequential paragraphs did not convert the particularised allegations of past infringement into a general, unparticularised allegation of infringement throughout the Community.

3. Although the original wording referred to acts within the United Kingdom, the defendants had known since the earlier amendments that the claimant relied on the cycle-shirt use and the relevant domain name. It was therefore fair and realistic to permit paragraph 18 to refer to acts within the United Kingdom and/or France, as particularised in paragraph 19. This did not constitute a major change in the claimant’s case.

4. The amendment was within the second defendant’s earlier submission to the jurisdiction. That submission included the court’s investigation of whether the identified activities infringed the claimant’s marks. The proposed clarification concerned the territorial location of those activities, not a new underlying infringement allegation.

5. The court refused to extend the pleading generally to the European Union. Only past acts particularised in paragraph 19 could be investigated at trial. The suggested Belgian element was not added, being de minimis and unsupported by a sufficiently clear case.

6. The court noted the general principle stated in DHL Express France SAS v Chronopost SA concerning the territorial scope of injunctions for Community trade marks, including its exceptions. It expressly declined to rule on the application of that principle to the alleged infringement or on whether the defendants could rely on an exception on their existing defence. The point should not first emerge at trial.