In Enterprise v Europcar, Arnold J held that the geographical scope of an injunction granted to restrain trade mark infringement and of the inquiry as to damages should be limited to the UK, even though the case involved a European Community trade mark. The court also granted the claimant a publicity order for three months.
In reaching his decision, Arnold J considered DHL Express v Chronopost (Case C-235/0), in which questions on the nature and geographical scope of an injunction involving a claim for infringement under Article 9(1)(a) of the Community Trade Mark Regulation were referred to the Court of Justice of the European Union (“ECJ”). In DHL, the ECJ held that a prohibition against further infringement or threatened infringement of a Community trade mark must, as a rule, extend to the entire area of the EU. This was because of the unitary character of the Community trade mark and the need for consistent decisions to be taken in different Member States in respect of the same acts of alleged infringement. The ECJ recognised however, that there were two permitted exceptions to this general rule: (1) where the applicant has restricted the territorial scope of its action; and (2) where the sign at issue is held to not affect the functions of the trade mark in some jurisdictions (for example, on linguistic grounds).
Arnold J considered that it was unclear whether the ECJ’s ruling in DHL also applied to claims under Article 9(1)(b) of the Regulation (confusion) and Article 9(1)(c) (dilution) and considered that a reference to the ECJ on this point would be required at some stage.
In any event, if the ECJ’s reasoning was applicable, then Arnold J felt that the facts of this case fell within the two permitted exceptions from DHL. The claimant had restricted the territorial scope of its action and had provided limited evidence before the court as to the position outside of the UK: “In the light of such evidence as there is… the conclusion that I would reach would be that Europcar’s use of the e-moving logo does not affect, and is not liable to affect, the functions of [Enterprise’s trade mark] in any Member State other than the United Kingdom”.
In the circumstances, Arnold J believed the geographical scope of the injunction should align with the position regarding financial remedies. As Enterprise’s pleaded claim for financial relief had always been confined to the UK and not Europe as a whole, it was appropriate for the geographical spread of the injunction to also be limited to the UK.
The court also granted Enterprise a publicity order “to act as a supplemental deterrent to future infringers and to contribute to the awareness of the public at large”; which was especially important in this case as there had been found to be actual confusion on the part of consumers in the UK. The publicity order was granted for three months, as the case concerned vehicle rental services, which were sporadic purchases and therefore “many consumers would never see” a publicity order which was only required to be displayed for one month.
This case provides a useful reminder of the ECJ’s principles in DHL, as well as its limitations. It will be interesting to see how the ECJ will clarify this grey area in any referral in the future.
Enterprise v Europcar  EWHC 300 (Ch)