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High Court victory for Enterprise Holdings in trade mark claim

City law firm Lewis Silkin act in second major IP-related case in a year

14 January 2015

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The world's largest provider of vehicle rental services has won a claim for IP infringement against a major competitor over the use of an 'e' trade mark.

Enterprise Holdings brought a claim in the Hight Court against its competitor, Europcar, for the adoption of its 'e' trade mark and 'e' logo.

Mr Justice Arnold's judgment found for Enterprise on both trade mark infringement and passing off claims, and recognised that Enterprise's 'e' trade 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 judgment also gave weight to evidence that, "in the field of car rental it [the 'e'] is 'short hand' for Enterprise - a brand in its own right, much in the same way that McDonald's 'M' is a shorthand for them in the fast food industry".

These findings were re-affirmed by virtue of the fact that Enterprise had commissioned a survey which showed that a significant number of members of the public recognised the 'e' logo as being associated with Enterprise.

The judgment also notes "clear evidence of a significant level of confusion between Enterprise's services and Europcar's services amongst consumers of vehicle rental services".

The confusion referred to was caused after Europcar introduced its own lower-case 'e' logo in December 2012. Evidence was produced to show that during 2013 and 2014, Europcar customers appeared to have mistakenly boarded the Enterprise shuttle buses at Heathrow Airport.

Taking findings on similarity and enhanced distinctiveness into account, Arnold J determined the only viable explanation for such confusion was Europcar's use of the new logo.

City law firm Lewis Silkin acted for Enterprise in the High Court. Commenting on the decision, Simon Chapman, partner at Lewis Silkin, said: "This case clarifies a number of points of law important for all brands, including the factors which are to be taken into consideration when assessing the degree of protection trade marks are entitled to benefit from.

"[The] result is re-assuring for brand owners, particularly those who have adopted 'short-hand' logos for use in the digital space. If such use is sufficient for consumers to identify that logo with a brand which provides a particular service, then the brand owner may be able to enforce those rights against third parties."

The judgment is the second major IP-related victory for Lewis Silkin in the past 12 months, following the landmark decision in the Lush v Amazon dispute from February 2014.

John van der Luit-Drummond is legal reporter for Solicitors Journal

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