Factual and Procedural Background
This trade mark dispute concerns whether the sign PETSURE, used in relation to pet insurance, is confusingly similar to the trade mark VETSURE registered for the same service. The Claimant ("TVIS") appeals a decision by a Deputy High Court Judge who held that there was no likelihood of confusion. TVIS is a specialist pet insurer and proprietor of the registered trade mark VETSURE. The Defendants ("Howserv") are part of a group that entered the pet insurance market using the sign PETSURE, which is also a registered trade mark. TVIS challenged Howserv's trade mark registration and alleged trade mark infringement and passing off.
The case was tried under the Shorter Trials Scheme over three and a half days. The judge first considered the validity of Howserv's registration and then whether infringement or passing off had occurred. The appeal focuses on the claim of infringement under section 10(2) of the Trade Marks Act 1994.
Legal Issues Presented
- Whether the sign PETSURE is confusingly similar to the trade mark VETSURE in relation to pet insurance services, thereby infringing the trade mark under section 10(2) of the Trade Marks Act 1994.
- Whether Howserv's trade mark registration is invalid under sections 5(2), 5(3), and 5(4)(a) of the Trade Marks Act 1994.
- Whether Howserv has committed the tort of passing off.
- How to assess likelihood of confusion, including considerations of visual, aural, and conceptual similarity, distinctive character of the trade mark, evidence of actual confusion, and the impact of imperfect recollection.
Arguments of the Parties
Appellant's Arguments
- The judge erred in assessing the degree of visual and aural similarity, which should have been found to be highly similar, not merely similar.
- The judge incorrectly held that the trade mark and the sign were not conceptually similar; in fact, they are conceptually very similar as both relate to insurance for veterinary services.
- The judge wrongly found the trade mark to be descriptive and lacking in distinctive character, despite the trade mark's validity not being challenged and its invented nature.
- The judge failed properly to consider the likelihood of confusion from the perspective of consumers familiar with the trade mark and did not adequately account for imperfect recollection or the interdependency principle.
- The judge gave inadequate reasons for dismissing evidence of actual confusion, wrongly categorizing many instances as mere administrative errors rather than genuine confusion.
Appellee's Arguments
- The judge correctly assessed the degree of visual and aural similarity as similar, which is sufficient for the analysis of confusion.
- There is a conceptual difference between VETSURE and PETSURE, which reduces the likelihood of confusion by conceptual counteraction.
- The trade mark is descriptive and does not have a highly distinctive character, justifying the judge's findings on distinctiveness and likelihood of confusion.
- The evidence of actual confusion was properly evaluated as largely showing administrative errors rather than confusion affecting consumer perception.
- There was no likelihood of confusion, direct or indirect, and the judge's reasons were adequate and consistent with legal principles.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 |
Assessment of likelihood of confusion requires consideration of actual use and context. |
The court applied this principle to emphasize the need to consider how the sign was used in the market when assessing infringement. |
| The European Ltd v The Economist Newspaper Ltd [1998] FSR 283 |
Distinction between genuine confusion and administrative errors in evidence of actual confusion. |
The judge referenced this case to distinguish between administrative errors and relevant confusion; the appellate court questioned the use of "administrative errors" but accepted some instances showed genuine confusion. |
| Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159 |
Where a trade mark is largely descriptive, small differences may suffice to avoid confusion. |
The judge applied this principle to conclude that descriptive marks might reduce likelihood of confusion, but the appellate court disagreed with the premise that VETSURE is largely descriptive. |
| Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15 |
Standard of review on appeal for multi-factorial evaluations is limited to errors of law or principle. |
The appellate court acknowledged this standard and intervened only where legal or principled errors were identified. |
| Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8 |
Reinforces the appellate standard for reviewing factual and evaluative findings. |
The court cited this case to justify the appellate approach to the judge’s multi-factorial assessment. |
| European Union Intellectual Property Office v Equivalenza Manufactory SL (Case C-328/18 P) |
Conceptual counteraction principle: conceptual difference can counteract visual and aural similarity only if a sign has a clear and specific meaning. |
The court found this principle inapplicable here because the signs did not have the required clear and specific conceptual meaning. |
| Formula One Licensing BV v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case C-196/11 P) |
A valid trade mark must be presumed to have distinctive character. |
The appellate court held that the judge erred in treating a valid trade mark as lacking inherent distinctiveness. |
| W3 Ltd v easyGroup Ltd and easyGroup v easylife [2021] EWHC 2150 (Ch) |
Consideration of actual confusion evidence and its weight. |
The court compared the present case to W3 v easyGroup, noting differences in evidence quantity and market presence. |
Court's Reasoning and Analysis
The court undertook a detailed multi-factorial analysis of the likelihood of confusion between PETSURE and VETSURE. It began by affirming the visual and aural similarity of the signs, noting identical letter counts and similar sounds, differing only in the first letter. However, the lower court had found no conceptual similarity, reasoning that "VET" and "PET" conveyed different meanings to the average consumer. The appellate court disagreed with this finding, concluding that the conceptual difference was minimal or non-existent, as both relate to insurance for veterinary services, the same service offered by both parties.
The court critiqued the judge's assessment of the trade mark's distinctive character, rejecting the conclusion that it was descriptive. Instead, the court found VETSURE to be an invented portmanteau with a low-to-medium inherent distinctiveness and moderate acquired distinctiveness due to reputation and use. The judge's inconsistent findings regarding the mark's reputation and distinctiveness were highlighted and corrected.
Regarding evidence of actual confusion, the court reviewed multiple examples of consumer mistakes, misdirected calls, and claims submitted under the wrong brand. Contrary to the judge's characterization of these as administrative errors or mere mis-naming, the appellate court found that many instances demonstrated genuine consumer confusion stemming from the similarity of the marks. It emphasized that both marks were regarded as brand names by consumers, not mere descriptors, and the conceptual difference did not prevent confusion.
The court also addressed the principle of imperfect recollection, noting that the judge inadequately considered how consumers familiar with VETSURE might misread or mishear PETSURE. It found merit in the appellant's argument that the interdependency principle (the interplay between similarity of marks and identity of services) was not properly applied.
The court rejected the application of the conceptual counteraction principle because neither sign had a clear and specific meaning sufficient to counterbalance the visual and aural similarity.
Balancing all factors, including the market context where multiple pet insurance brands use descriptive elements, the court concluded that the similarity of the marks, combined with the identity of services and evidence of confusion, established a likelihood of confusion among the relevant public.
Holding and Implications
The court ALLOWED THE APPEAL, overturning the Deputy High Court Judge's decision. It held that the sign PETSURE is confusingly similar to the trade mark VETSURE in relation to pet insurance services, thereby infringing the trade mark under section 10(2) of the Trade Marks Act 1994. The claims for invalidity of Howserv's trade mark registration and passing off were also upheld in favor of TVIS.
The direct consequence is that Howserv's use of PETSURE in the pet insurance market is unlawful as it infringes TVIS's registered trade mark. The decision does not set a new legal precedent but clarifies the application of established principles regarding similarity, distinctiveness, conceptual counteraction, and evidence of confusion in the context of descriptive marks and competitive markets.