Enterprise Holding Inc v Europcar Group UK Limited & Anor

An injunction for trade mark infringement should ordinarily be granted in general terms, although the court may impose specific terms where the circumstances justify it. A Community trade mark injunction and related financial remedies will ordinarily extend throughout the European Union, subject to recognised exceptions, including where the claimant has restricted the territorial scope of its action or the use does not affect, or is not liable to affect, the mark’s functions elsewhere. The geographical scope of financial relief may follow that of the injunction, but pleaded territorial limits may be decisive. Publicity orders are discretionary and depend on the circumstances, including the need for deterrence, public awareness and an effective period of publication.

The claimant succeeded in trade mark infringement proceedings against the defendants. The court had previously found infringement under Article 9(1)(b) of the Community Trade Mark Regulation in relation to acts within the United Kingdom. It then considered the specificity and geographical scope of the injunction, the geographical scope of an inquiry as to damages or an account of profits, costs, and a publicity order.

The territorial issues were affected by earlier amendments to the claim. Morgan J had permitted reliance on acts in the United Kingdom and France but not elsewhere in the European Union, and the claimant later abandoned reliance on French acts. The central questions were whether the remedies should extend beyond the United Kingdom, whether the injunction should be specific, and whether publicity should be ordered.

1. Specificity of injunction. The court adhered to its approach in Interflora Inc v Marks and Spencer plc [2013] EWHC 1484 (Ch). An injunction should ordinarily be granted in general terms. A specific injunction remains available where the circumstances make it appropriate. No such circumstances existed here, so a general injunction was ordered.
2. Geographical scope. Under DHL Express France SAS v Chronopost SA Case C-235/09, [2011] ECR I-2801, a Community trade mark injunction ordinarily extends across the European Union, subject to exceptions. The first exception applied because the claimant had restricted its action by relying on past infringing acts in the United Kingdom and France, and had abandoned the French allegations. The second exception also applied on the evidence: the defendants’ use did not affect, and was not liable to affect, the functions of the mark outside the United Kingdom.
3. For Article 9(1)(b) and Article 9(1)(c) claims, the claimant bears the burden of establishing likelihood of confusion or the relevant injury. No presumption of such matters applied. The relevant factors could vary between Member States. The court recognised that its provisional interpretation of the law was far from clear and might require a reference to the Court of Justice.
4. The injunction and financial remedies were confined to the United Kingdom. The pleaded claim for financial relief had always been territorially limited, which was decisive. The same conclusion applied to the injunction.
5. Costs and publicity. The claimant recovered 90 per cent of its costs, reflecting costs attributable to abandoned allegations concerning subjective intention and France. A publicity order was not automatic. It was appropriate here because actual consumer confusion supported deterrence and public awareness. Publication for three months was suitable for sporadic vehicle-rental purchases, and the notice was limited to infringement of a logo trade mark in the United Kingdom.

The judgment itself records an earlier order by the High Court concerning amendments to the claim: [2014] EWHC 3169 (Ch). The claimant was permitted to rely on acts in the United Kingdom and France, but not elsewhere in the European Union. There was no appeal against that order.