The High Court recently handed down its judgment in TVIS Ltd v Howserv Services Ltd and others [2023] EWHC 2589 (Ch), in which the Claimant had alleged that the Defendants’ PETSURE trade mark was invalid and infringed their VETSURE mark.
Background
The Claimant was founded in 2009 and is a specialist insurer, providing pet insurance under the brands VETSURE and VETSURE PET INSURANCE. They also provide pet health plans under the brand VETSURE PET HEALTH PLANS. This insurance is sold directly to consumers through veterinary practices. The Defendants are part of the Staysure Group, launched in 2004, which originated in travel insurance but moved into the pet insurance business when the pandemic hit.
The Defendant filed PETSURE in October 2020. The Claimant claimed that this mark was invalid under sections 5(2), 5(3) and 5(4) of the Trade Marks Act 1994 (the “Act”) and also infringed its VETSURE mark under sections 10(2) and 10(3) of the Act which was registered variably between 2010 and 2018.
It was common ground in the case that the average consumer for the purposes of the Act was pet owners with an average level of attention, who would know that insurance services would use the suffix “sure” in their names.
The judgment
Validity
Mr Ian Karet, sitting as Deputy High Court Judge, first gave his judgment in relation to the validity claims. The Claimant had argued that the marks were highly similar for identical goods and there was a likelihood of confusion and therefore the PETSURE mark should be invalidated. Considering the principles in Match Group, LLC & Ors. v Muzmatch Ltd & Anor [2023] EWCA Civ 454, the Claimant argued that the marks were:
- Visually similar, as they both had seven letters and only the first letter was different;
- Aurally similar, as “ETSURE” is pronounced in the same way; and
- Conceptually identical, because both evoke pet insurance.
The Defendants argued that the average consumer does not generally perceive a descriptive word as dominant in the overall impression and that both marks contained common descriptive elements.
The Judge agreed that the marks were visually and aurally similar, however did not consider them to be conceptually similar; he deemed them to each refer to different descriptive concepts (“VET” and “PET” meaning different things and “SURE” being descriptive of insurance services) and the average consumer would understand this. Therefore, he concluded the PETSURE mark was not invalid under section 5(2) of the Act.
When considering section 5(3) of the Act, Mr Karet held that VETSURE “has the required reputation but the strength of the mark is not high”. The mark is made up of descriptive elements in a market saturated with such signs. VETSURE was mainly disseminated through a marketing network of vets, which the judge deemed to compound its descriptive nature. This meant that one such mark would call to mind another, thereby establishing no link between them. Therefore the PETSURE mark was not invalid under this section either.
Finally on invalidity, the Judge dealt with section 5(4) very quickly, recognising that the Claimant did own goodwill in VETSURE for pet insurance in the UK but there was no actionable misrepresentation and the PETSURE mark was not likely to cause confusion and deception for a substantial proportion of customers.
Infringement
The Claimant brought claims of trade mark infringement under sections 10(2) and 10(3) of the Act.
The Claimant asserted that the VETSURE brand enjoys “enhanced distinctive character”, which they alleged increased the likelihood of confusion under section 10(2). However, the Judge did not agree, finding that the Claimant hadn’t established any such distinctive character, considering the VETSURE business to have a relatively small market share in which there are numerous providers. The Claimant had provided 25 examples of confusion. The Judge noted that many of these were transcripts of phone calls, which he said could be read in a number of ways and carried extra risk due to errors in transcription. The Judge concluded on many of the examples that the person in question was “generally confused” or knew the difference but had contacted the wrong business by mistake, or otherwise that they had contacted the right company but called it the wrong name on the phone. This was further bolstered by examples from the Defendants, where the same error was made prior to the Defendants trading under the PETSURE brand, and examples of Trustpilot reviews where both VETSURE and PETSURE were referred to. This showed the general confusion in the marketplace and interchangeability of the names due to their descriptive nature. The so-called “administrative confusion” did not, in the Judge’s view, amount to actual confusion although no witnesses gave oral evidence on confusion and there was no evidence disclosed regarding the other similar names in the market. He therefore concluded there was also no likelihood of confusion and the limited examples that he deemed to be actual confusion were insufficient.
The Judge swiftly dealt with the section 10(3) claim, on the same bases as he had provided for under the section 5(3) claim, as the requirements in both mirror each other. The claim for passing off was also quickly dismissed.
Shorter Trials Scheme procedure
The Judge also made some comments on the parties’ approach to the Shorter Trials Scheme, which the case was subject to. The Judge suggested that a “substantially different approach” should have been taken by both sides, in particular in relation to disclosure. They had asked the Judge to review a large volume of supplemental documentary evidence on he had not heard oral submissions due to time restraints allotted to STS hearings.
What can we learn from this?
1. Be careful when it comes to what could be deemed descriptive marks. It’s important to consider this point when registering your trade mark(s), long before you try to enforce your mark against a third party in an infringement situation;
2. Evidence, evidence, evidence. Though the Judge was provided with dozens of instances of the two brands getting mixed up, it was not enough in the face of a descriptive mark which was deemed to have low distinctive character and with the backdrop of a ‘baseline’ level of confusion in the market;
3. Consider the strength of confusion evidence, too. The Judge did not give a lot of weight to phone transcripts which are susceptible to errors.
There are thus incidents of mis-naming by consumers and a number of cases of mistakes occurring in a vet's practice. The picture that they give is consistent with the fact that both parties' names are of a descriptive nature and that their elements may be interchanged by mistake – but there does not appear to be confusion as to the parties providing the services. A number of the callers have not taken care before initiating a call and a number have made mistakes based on internet searches. It is not apparent that they are paying attention to the matter at hand in a way that the average consumer would.
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