Enterprise Holdings, Inc v Europcar Group UK Ltd & Anor

Infringement under Article 9(1)(b) requires a global assessment of all relevant factors, viewed qualitatively from the perspective of the average consumer. The court must consider the marks’ overall impressions, distinctive character, the identity or similarity of the services, the context of use and any evidence of actual confusion. An imperfect recollection may produce confusion despite relatively low visual similarity.

For Article 9(1)(c), a link is insufficient without evidence of actual or seriously probable economic harm for dilution, while unfair advantage requires a global assessment of the relevant circumstances. Passing off remains governed by the goodwill, misrepresentation and damage requirements of the common law, assessed by reference to ordinary purchasers exercising ordinary caution.

Enterprise and Europcar competed in the UK vehicle-rental market. Enterprise relied principally on Community Trade Mark No. 9374497, a stylised lower-case “e” registered in black and white, but used extensively in green and white. Europcar adopted and used a similar lower-case “e” logo, known as the e-moving logo, in connection with its vehicle-rental services.

Enterprise alleged infringement under Article 9(1)(b) and Article 9(1)(c) of Council Regulation 207/2009/EC and passing off. The court considered the distinctive character and reputation of Enterprise’s mark, the similarity and context of the competing signs, actual consumer confusion, dilution, unfair advantage and the relevance of foreign-resident consumers.

1. Article 9(1)(b). The statutory conditions were substantially common ground apart from similarity and likelihood of confusion. The assessment had to be global and qualitative, taking account of the average consumer, the distinctive character of the mark, the similarity of the signs and services, the context of use and actual confusion.
2. The Enterprise mark had fairly high inherent distinctive character in the vehicle-rental sector and enhanced distinctive character through extensive use in green and white. Registration in black and white did not prevent the colour used by the parties from being relevant to the global assessment.
3. Vehicle-rental consumers could display varying levels of attention. Foreign residents using rental services physically supplied in the UK formed part of the relevant public, although their reactions required appropriate caution. The competing services were identical. The signs had relatively low overall similarity, but imperfect recollection could lead consumers to mistake the e-moving logo for Enterprise’s mark.
4. Europcar’s branding context reduced the likelihood of confusion, but did not eliminate it. The logo retained an independent distinctive role and was used as a unifying visual element for Europcar’s sub-brands. The evidence established actual confusion, including confusion involving shuttle buses and rental locations. Enterprise therefore succeeded under Article 9(1)(b) in relation to all three categories of use.
5. Article 9(1)(c). Enterprise’s mark had a UK reputation sufficient, in the circumstances, to constitute a reputation in the European Union. The e-moving logo created a link, but the dilution claim failed because there was no evidence of a change in consumers’ economic behaviour or a serious likelihood of such a change. The unfair-advantage claim also failed on the assumption that there was no likelihood of confusion.
6. Passing off. The claim succeeded. The ordinary goodwill, misrepresentation and damage requirements were satisfied. The relevant public could include foreign visitors who encountered the defendant’s sign in the UK. No special duty arose from any pre-existing undercurrent of confusion, although that background was relevant to the ordinary infringement assessment.