England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		The Rolls Building, 7 Rolls Buildings, Fetter Lane, London, EC4A 1NL
		30th September 2014

MR. JUSTICE MORGAN:

1. This is an application by the claimant, Enterprise Holdings Inc, for permission to re-amend its Particulars of Claim. The claim is for trade mark infringement. The claimant relies upon a number of marks. Some are registered in the United Kingdom and others are Community trade marks. For present purposes, it is the Community trade marks which are relevant.
2. In very brief summary, the claimant alleges past infringement of the Community marks and a threat of future infringement. The claimant seeks an injunction in relation to threatened future infringement and damages or an account of profits in relation to past infringement.
3. The application for permission to re-amend the Particulars of Claim, which has given rise to strenuous opposition, relates to the claimant's pleading as to past infringement in particular. The Particulars of Claim have been amended once with the consent of both defendants, Europcar Group UK Limited and Europcar International SASU. The first of those defendants is a company registered in England and Wales and the second defendant is a company registered in France. These amendments, the red amendments, received the consent of both defendants on 24^th October 2013 and the defendants' Defence and Counterclaim was amended in consequence of the claimant's red amendments. As will be seen, I consider that the red amendments are significant when considering what to do on the present application.
4. In the course of the argument, I have been taken to the Particulars of Claim as originally served, then to the first set of amendments (the red amendments) and then to the proposed re-amendments which are in green ink. I have found it helpful to look at the pleadings as they evolved in determining what I should do on this application. In that way, I will begin by considering the original Particulars of Claim.
5. The original Particulars of Claim identified the Community marks relied upon. It is common ground that a Community trade mark has a unitary character which has equal effect throughout the Community. That is provided by Article 1(2) of the Community Trade Mark Regulations. Paragraph 17 of the original Particulars of Claim is important. The opening words read as follows:

"The Trade Marks have an enhanced distinctive character and/or a reputation as a result of the use that has been made of them both in the United Kingdom and elsewhere in the EU. In addition to providing an enhanced distinctive character and/or reputation in respect of the Claimant's UK trade mark, the United Kingdom use and promotion amounts to sufficient use for the purposes of establishing an EU reputation and an enhanced distinctive character in the EU in respect of the Claimant's Community trade mark."

6. Accordingly, at the forthcoming trial, it will be necessary for the court to investigate whether that plea has been established. I draw attention to the fact that the pleaded case as to the reputation of the marks is not confined to their reputation in the United Kingdom, but it is here expressly pleaded that there is a reputation (and an enhanced distinctive character for that matter) elsewhere in the EU. There does not appear to have been any request for particulars as to whether the allegation is throughout the EU or only as to part of the EU. The particulars given under paragraph 17 refer in a number of places to the EU although the red amendments in particular also refer to particular Member States of the EU in addition to the United Kingdom.
7. Paragraph 18 of the original Particulars of Claim – indeed this is the current form of paragraph 18 subject to today's application – reads as follows:

"Prior to the issue of the claim form herein and after the Claimant's trade mark registrations came into effect, each of the Defendants has acted in concert with each other in furtherance of a common design and/or individually and infringed the Trade Marks or any of them by carrying out the following acts within the territory of the United Kingdom …."

8. There is no room for doubt, taking paragraph 18 on its own for the moment, that the allegation there pleaded of past infringement of the Community trade marks was confined to acts within the territory of the United Kingdom. Paragraph 18 does not lend itself to the interpretation that the claimant was averring that there were acts of infringement somewhere else outside the territory of the United Kingdom.
9. Between paragraphs 18 and 19 of the original pleading came the heading, "Particulars of Trade Mark Infringement". That would lead the reader to expect that the following paragraph (paragraph 19) was by way of particulars of the allegation in paragraph 18 that the past acts of infringement relied upon were acts within the territory of the United Kingdom.
10. As it happens, paragraph 19 is something of a mixed bag. Paragraph 19.1 does not directly relate to acts of infringement, but it tells the reader that the second defendant has applied to register its own trade mark ("the later mark") and it is the intended use of that later mark which has no doubt given rise to these proceedings.
11. Paragraph 19.2 changes direction somewhat. This is not an allegation relating to past infringement and giving particulars. Instead, it refers to the future. It reads as follows:

"It is a reasonable inference that the Second Defendant and its related Europcar company licensees, including the First Defendant, intend to use the said mark across its operations, including in the United Kingdom."

So far as the defendants', in particular the second defendant's, activities are concerned, there is said to be an intention to use its new mark outside the United Kingdom as well as inside the United Kingdom. Whereas paragraph 18 would appear to refer to past infringement within the United Kingdom only, the allegation as to future infringement is not confined to the United Kingdom only.

12. I will continue with the original pleading and, for this purpose, I will omit paragraph 19.2A which was introduced by way of a red amendment. As one works through the remainder of paragraph 19 as originally pleaded, the allegations of infringement relate to activities within the United Kingdom. That applies certainly to 19.3, 19.4, 19.5, 19.6 and 19.8.
13. There is possibly a different position in relation to 19.7. That pleads the sending of an electronic Christmas card. The pleading does not specify who sent it, where it was sent from and it does not identify the recipient. It says that there was at least one recipient and that recipient was in Europe. However, it does not make it clear whether it is in Europe outside the UK. Indeed, it does not make it clear whether the claimant knows anything about the detailed facts. Therefore, paragraph 19.7 is perhaps at variance from paragraphs 19.3 to 19.8, which are otherwise quite clearly dealing with acts of infringement within the UK.
14. On the basis of paragraphs 18 and 19 as originally drafted, it seems to me quite clear that what is being alleged is past infringement within the territory of the United Kingdom. Paragraph 18 is very clear about that. Paragraph 19.2 is not dealing with past infringement. Paragraphs 19.3 to 19.8 are all dealing with the United Kingdom. Paragraph 19.7 is obscure and might just be referring to something outside the United Kingdom, but that obscurity in paragraph 19.7 would not justify the reader reinterpreting paragraph 18 so that it is a reference to acts outside the United Kingdom.
15. That is what was in the original pleading. I think it was suggested to me that the reference to the United Kingdom in paragraph 18 was a mistake and that it had been intended all along to plead acts of infringement more widely, including those outside the United Kingdom. On an objective basis, there seems to be very little support for that suggestion.
16. Continuing with the original pleading, paragraph 20 stated, "The said acts of the Defendants constitute …." That appears to be a reference to past acts rather than threatened future acts. One would interpret "the said acts" as being the acts in paragraphs 18 and 19 of the original pleading.
17. Paragraph 22 stated, "In the premises …. the Defendants having infringed the Trade Marks in the United Kingdom and in the European Community …." That is a reference to past infringement as "the premises" would seem to be a reference back to paragraphs 18 and 19.
18. Paragraph 18 is very clear that it is only dealing with infringement within the United Kingdom. Paragraph 22 suggests that there is something about paragraphs 18 and 19 which plead acts outside the European Community. If that is so then it must be that the intention was that what was pleaded in 19.7 was an act outside the United Kingdom. However, it is also fairly clear that there is something of a mismatch between paragraphs 18 and 22. Given that paragraph 18 is particularised in paragraph 19, I do not think one could conclude that paragraph 22 was intended to be a general averment of an unparticularised trade mark infringement in the European Community outside the United Kingdom.
19. Paragraph 23 is not a plea of trade mark infringement, but of passing off. The reference is to "the said acts". "The said acts" would appear to be the acts pleaded in paragraphs 18 and 19 which I have now described.
20. Paragraph 25 is important. It reads:

"Unless restrained by this Honourable Court, the Defendants threaten and intend to repeat and continue the acts complained of herein in the United Kingdom and …. European Community, whereby the Claimant will suffer further loss and damage."

That is entirely consistent with what one had in 19.2. It is an allegation of threatened infringement not confined to the United Kingdom.

21. The prayer for relief sought an injunction to restrain both defendants from infringing the trade marks including the Community trade marks. Given that there was a clear plea of threatened future infringement not confined to the United Kingdom, one would read paragraph 1 of the prayer for relief as similarly not confined to the United Kingdom. Indeed, as I have explained, the Community mark has a unitary character. That led the European Court of Justice Grand Chamber in the case of DHL Express France SAS v Chronopost SA to hold that the type of prohibition order or, in our language, injunction, which the Community Trade Mark Court will grant, in ordinary circumstances, is one which is not restricted to the territory in which previous infringing acts have been established, but will extend to all of the territory of the Community.
22. There are two exceptions to that general rule. One is where the claimant seeking the injunction has made it clear in its pleading that it only seeks relief of a narrower ambit. No one suggests the claimant has done that. The second exception to the general rule is where the defendant proves that the use of the sign is not liable to affect the functions of the trade mark, e.g. on linguistic grounds. In such a case, the court could limit the territorial scope of the prohibition or injunction which is granted.
23. In this judgment, I will not deal with the implications of DHL or its application to this case. On the face of it, the claimant's pleading before amendment does claim relief of the width permitted by the general rule in DHL. There is no pleaded defence which specifically deals with DHL. I was told today that there is scope for argument in this case as to whether DHL applies to the type of infringement which the claimant alleges here. If it does apply to the type of infringement which is alleged here, it has to be considered whether the defendant can bring itself within the second exception to which I have referred.
24. I am not going to give a ruling on this, but it seems to be undesirable at this late stage, in the run-up to a trial in December 2014, that that point has not surfaced in the pleadings to date. I am not going to rule whether one party or the other has to raise it. I am not going to rule whether it will be open to the defendants to make such a point, in particular invoking the second exception identified in DHL on their present defence. Potentially, it will create a difficulty if there is a major issue about this raised only at the trial and not identified in the pleadings in advance of the trial. For today's purposes, I can say – and there is no dispute about this – that the injunction claimed on the present pleading is a pan-European injunction.
25. In going through the original pleading, I have taken some pains to draw a distinction between acts of past infringement which are alleged and threats of future infringement. There is no doubt that the threats of future infringement relate to the Community and are not confined to the United Kingdom, but I hold on the original pleading that paragraphs 18 and 19 were confined to the territory of the United Kingdom with a question-mark as to the rather obscure Christmas card allegation in paragraph 19.7.
26. In conclusion, the result is that the claimant relied upon its Community trade marks. It pleaded that they had a reputation and a distinctive character throughout the European Community. That is a matter, if it is challenged, which will have to be established at the trial. The claimant pleaded past infringement confined to the UK, apart possibly from paragraph 19.7. The claimant pleaded a threat to infringe the Community marks in the Community. It also sought an injunction against infringement in the Community and it sought damages for past infringements, which are particularised in paragraphs 18 and 19.
27. I can now turn to the significance of the red amendments made in, or around, October 2013 with the consent of both defendants. The first relevant red amendment is the introduction of paragraph 19.2A. This is in paragraph 19 so, on the face of it, one would expect it to be a particular of trade mark infringement within the territory of the United Kingdom. It seems clear enough that the real point of 19.2A was to put forward examples of the use of the defendants' mark "solus" and not connected with the word "Europcar". The examples which follow in 19.2A are of that character. Most of the examples involve actions in the United Kingdom. There are references to Goodwood, Gatwick Airport, Lancing and so on.
28. Within these examples of solus use, there is a photograph of a cyclist wearing a Europcar shirt on which, under the word "Europcar", appears the word "Vendee", which is an area in France. The words of the pleading are:

"The use by the Defendants of the sign complained of in connection with its sponsorship of the 'Team Europcar' cycling team as shown below."

"As shown below" was a reference to the photograph of the cyclist in a shirt with the word "Vendee" on it.

29. It is also relevant to refer to another part of 19.2A which, as pleaded in red, was the use by the defendants of the sign in proximity to the words " 'to my door' on the website shown below." The website shown below is tomydoor by Europcar. The pleading does not identify that that is a French website. The domain name can be written out as www.tomydoor.fr, a French website.
30. In the red amendments made just under a year ago, there are two references to matters which have a French feel about them. Indeed, one would imagine on reading that pleading that one would wonder whether there is an allegation of infringing acts in France at the Tour de Vendee cycle race and the use of the French domain name. One would wonder whether there had crept in a mismatch between paragraph 18 (which is very specific about the territory of the United Kingdom) and these examples of solus use which appear to be based upon activities in France.
31. It seems to me that the time has come to resolve the possible mismatch between paragraphs 18 and 19.2A. What should be done? The defendants would say that paragraph 18 should be left as it is and the acts in paragraph 19 should be confined to the territory of the United Kingdom. Therefore, the two averments which have a French character should be cut down and confined to activities within the United Kingdom (if any). The activities in France in addition to the United Kingdom, or instead of the United Kingdom, should not be capable of being put forward as acts of past infringement.
32. I think that is unrealistic and too strict an approach. Since October or November of last year, the defendants have been aware that it is part of the claimant's case that they are going to draw attention to this use of the cycle T-shirt and the domain name and assert that that has involved an infringement of the claimant's mark. Whether the defendants expected that the allegation would be geographically confined to the UK or not, they must have appreciated that they had to face that allegation.
33. As it seems likely that most, if not all, of the activities in question were in France, a fairer and more even-handed way of removing the mismatch and allowing the case to go forward to trial is to say that paragraph 18 should be amended so that when it refers to "the following acts within the territory of the United Kingdom", that can now be extended to "within the territory of the United Kingdom and/or France, as particularised in paragraph 19 below."
34. That does not involve a major change in the claimant's case. They are still referring to the same use by the defendants. It is true that it is in France as well as in the United Kingdom, but I earlier drew attention to the allegation in paragraph 17 of the pleading that the claimant's marks have a reputation throughout the EU and therefore it is already pleaded that the claimant's marks have a reputation in France. That has to be explored, in any event.
35. The second defendant put forward a different point in relation to the amendment to paragraph 18 which I am otherwise prepared to permit. It said that it submitted to the jurisdiction of this court in relation to the original pleading, but not in relation to the amended pleading, which I have indicated I am minded to permit. However, what the defendant also submitted to was an allegation which involved the court investigating whether the cycle T-shirt and the domain name did or did not involve an infringement of the claimant's marks. It seems to me that there has been a submission to jurisdiction in relation to the question of infringement caused by those activities. Therefore, I would hold that an amendment making it clear that the allegation applies to actions in France as well as in the UK is within the earlier submission to jurisdiction.
36. I have already indicated that I will expand paragraph 18 to include France. There was a suggestion that the Vendee cycle race carried with it some implications for actions in Belgium. I think there is possibly a confusion between the Europcar Vendee shirt and the Europcar Tour de France shirt which may, for all I know, have involved Belgium. At any rate, the Belgian element here appears to be de minimis and the claimant does not press the addition of Belgium to paragraph 18.
37. Initially, the claimant sought a wider amendment to paragraph 18. They wanted to be permitted to alleged that the past infringing acts extended beyond the territory of the United Kingdom so that they were elsewhere in the European Union. However, if I look through the particulars in paragraph 19, the only parts of the European Union in which infringing acts are identified are the UK and/or France. It is inappropriate to widen it, particularly if, as I expect, the claimant would then seek to bring forward matters which they have not particularised and seek to have them investigated at the trial on the basis of paragraph 18 as a general unparticularised averment. At this stage in the litigation, that seems to me to be inappropriate. The only actions in the past which can be investigated as a possible past infringement must be those particularised in paragraph 19.
38. That was the central matter argued and that is my ruling on it. Shortly before giving this judgment, I went through, in open court, the consequences of that ruling for the other green ink amendments in the draft pleading. However, I do not think it is necessary to do that exercise again at this stage.