In a concise judgment led by Lord Justice Arnold, the Court of Appeal has upheld the claimant's appeal in TVIS Ltd (“TVIS”) v Howserv Services Ltd and others (“Howserv”) [2024] EWCA Civ 1103, overturning the High Court’s decision that the Defendant’s mark PETSURE does not infringe the Claimant’s VETSURE. TVIS appealed on four grounds, one of which, unusually, was that the likelihood of confusion assessment should be reconsidered given the first instance judge made errors in his assessment of similarity between VETSURE and PETSURE. In a complete reversal of the judgment, Arnold LJ held that Howserv was liable for trade mark infringement pursuant to section 10(2) of Trade Marks Act 1994 (“TMA”), passing off and also that PETSURE was invalid pursuant to section 5(2) TMA, concluding that there was in fact a likelihood of confusion.
Background
TVIS, a specialist insurer, owns the trade mark VETSURE, while Howserv, part of the Staysure Group, operates under the brand PETSURE. Both parties sell pet insurance under their respective marks.
TVIS had initially not opposed the PETSURE application at the UKIPO but subsequently sought to invalidate it, adding in claims for trade mark infringement and passing off. The High Court judgment handed down in October 2023 contained, in my view, some questionable analysis on the comparison of VETSURE and PETSURE, but then concluded that many of the 25 examples of confusion put forward by TVIS were in fact only “administrative errors”. Despite the finding of a limited number of actual cases of confusion, there was no likelihood of confusion so no success under s.10(2) TMA. The judgment gave scant analysis to the claim under s.10(3) and passing off, so the claimant therefore failed on all counts.
As a point of interest, the case was heard in the Shorter Trial Scheme (“STS”) of the High Court which provided parties with a limited timetable for oral evidence. The parties were afforded very limited time to address the Judge on the confusion evidence and the resulting finding may be indicative of this limitation in the STS.
Appeal
TVIS appealed on the followed grounds:
- The Judge erred in holding that PETSURE is visually and aurally merely “similar” to VETSURE and that he should have held it was “highly similar”;
- The Judge erred in holding that VETSURE and PETSURE were “not conceptually similar” and were “for different concepts”;
- Four criticisms of the Judge’s assessment of distinctive character of VETSURE; and
- Following the abovementioned errors, the likelihood of confusion should be reassessed.
The Court of Appeal made the following comments on the four grounds of appeal:
Visual and aural similarity: Arnold LJ disagreed with the Claimant, as there was no error or principle that had been identified. The Judge’s assessment was not plainly wrong. VETSURE and PETSURE have the same number of letters and similar sounds and only the first letter was different. He made no error in assessing the nature and extent of the visual and aural similarities.
Conceptual similarity: Arnold LJ held that the Judge had muddled the assessment of conceptual similarity between VETSURE and PETSURE with the assessment of distinctive character of VETSURE. He also didn’t say what the different ‘concepts’ were for the two marks or how they differed, saying only that the average consumer would understand PET and VET to mean different things and not explaining what PETSURE would be understood to describe. Arnold said that surely, following previous logic, PETSURE would be insurance for pets, and pet insurance is primarily needed for veterinary services. This all points to considerable conceptual similarity.
Distinctive character of the Trade Mark: this ground contained various criticisms. Arnold LJ keenly pointed out that the Judge had held VETSURE to be “descriptive”, yet Howserv had not challenged the mark’s validity, so it was not open to the Court to find that the mark lacked distinctive character. Arnold LJ disagreed that VETSURE was descriptive; it is an invented portmanteau, which alludes to pet insurance but does not describe it. He assessed it as having low-to-medium inherent distinctive character.
Likelihood of confusion: a ground that would not usually be open to the Court of Appeal to reassess, but TVIS argued that if the overall assessment of the marks was incorrect then this should be a ground of appeal. TVIS argued, and Arnold LJ agreed, that the trial judge:
- Failed to properly take into account imperfect recollection, and did not address the possibility for consumers to mistake PETSURE for VETSURE. He also ignored that no other pet insurance provider had the suffix -SURE, or even -ETSURE;
- Failed to consider the likelihood of confusion from the perspective of consumers who already knew VETSURE. Those who are familiar with the brand, may misread or mishear PETSURE for VETSURE, particularly as P and V sound similar;
- Failed to give effect to interdependency given that the services are identical.
Arnold LJ went so far as to review examples of the confusion evidence where he disagreed with the Judge’s assessment. The consumers were not atypical of pet insurance nor were they particularly careless, and he reminded us that trade mark law is all about consumers’ unconscious assumptions. It is difficult to see why a small number of instances of actual confusion is not probative of a likelihood of confusion. A small number of incidents were not insignificant, as after all, the parties were two “small ships in a vast ocean, yet [there was] instance after instance of them crashing into one another”.
Arnold LJ concluded, with which Philips LJ and Newey LJ agreed, that there were visual and aural similarities between VETSURE and PETSURE, there was distinctive character in the mark VETSURE and together with the interdependency principle this all points to a likelihood of confusion. The evidence of “administrative errors" should actually have been held as "significant indicators of confusion".
The court upheld TVIS’s appeal for trade mark infringement, passing off and invalidity of the PETSURE mark.
Comment
This case underscores the importance of considering the average consumer’s perception and the likelihood for confusion in trade mark disputes, particularly in markets with descriptive or allusive brand names. The decision highlights the need for careful assessment of all evidence, including actual instances of confusion, to determine the likelihood of confusion between similar marks.
I found the initial judgment last year challenging given the dozens of examples of the two brands being confused by consumers, and the seemingly, at least, low-to-medium similarly between VETSURE and PETSURE, both for identical insurance services. It appeared erroneous that such a large number of “administrative errors” did not point to multiple consumers being confused, or likely to be confused.
I fear that the decision is a reflection on the squeezed time for presenting oral arguments in STS trials, and that the Claimant did not call any witnesses of fact to speak to the confusion evidence. Careful strategic consideration of the appropriate forum is always worth considering. Quicker is not always better. For now, VETSURE appears to have had the last bark.
The visual and aural similarities between the Sign and the Trade Mark, the distinctive character of the Trade Mark and the interdependency principle all point to a likelihood of confusion taking the possibility of imperfect recollection into account. For the reasons explained above, the conceptual counteraction principle is not applicable in this case. If anything, the conceptual similarity between the Sign and the Trade Mark supports the existence of a likelihood of confusion.
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