A version of this article first appeared in WTR Daily, part of World Trademark Review, in October 2024. For further information, please go to www.worldtrademarkreview.com.
The Court of Appeal recently overturned the High Court in finding that two veterinary insurance trade marks are conceptually similar and that there is a likelihood of confusion between them.
- The Court of Appeal overturned the High Court's decision, finding that there is a likelihood of confusion between the 'VETSURE' and 'PETSURE' marks.
- The High Court erred in its analysis of evidence of confusion, distinctiveness and conceptual similarity between the marks.
- Parties' lack of preparation for the Shorter Trials Scheme limited the time for oral submissions in the High Court.
Background
The Appellant (initially the Claimant) ("TVIS") is a pet insurance provider that registered the VETSURE mark in March 2010. The Respondent (initially the Defendant) ("Howserv") registered the PETSURE mark in October 2020 for the same services. TVIS did not oppose Howserv's application but later applied for a declaration of invalidity, followed by High Court proceedings for trade mark infringement and passing off. The High Court found that despite the visual and aural similarity, there was no conceptual similarity, and thus there was no likelihood of confusion.
The appeal
In overturning the High Court's decision, Lord Justice Arnold concluded on behalf of the two other justices that there were three main aspects where the High Court had erred.
- Conceptual similarity – the Court of Appeal found that
the marks were not for different concepts. Rather, if VETSURE
described veterinary insurance, then PETSURE described pet
insurance – and if a pet needed insurance, then this would
invariably also be veterinary insurance. As such, there was
"considerable conceptual similarity". It therefore
followed that the "conceptual counteraction" principle
(wherein conceptual differences can offset visual and aural
similarities in assessing likelihood of confusion) cannot apply as
there is little conceptual difference between the two.
- Distinctiveness – the Court of Appeal found that despite
the components of the VETSURE mark being descriptive of the service
provided (VET for veterinary/pet and SURE for insurance), the
combination is not necessarily descriptive. Such "invented
portmanteau[s]" may allude to pet insurance, but they are not
descriptive of them. Instead, the marks are brand names and are
regarded as such by consumers. Furthermore, Lord Justice Arnold
emphasised that numerous other pet insurance providers' brand
names are PET- prefixed, but there is only other one VET- prefixed
name in the market.
- Likelihood of confusion (as a consequence of the previous two aspects) – by assessing the evidence in the form of online chat and telephone records, the Court of Appeal found that there was actual confusion between the two marks. Consumers had contacted the wrong company due to confusion between the marks. The consumers would often quickly recognise their mistake, but this does not detract from the initial actual confusion. As such, the court found the evidence of actual confusion persuasive in finding that there was a likelihood of confusion. It is important to note that Arnold LJ stated that a lack of observance of the requirements of the Shorter Trials Scheme by the parties meant that the High Court judge was limited to assessing documentary evidence and written submissions on this point as the parties had run out of time for oral submissions at first instance.
Comment
Arnold LJ's analysis demonstrates how evidence of actual confusion may tip the scales in indicating likelihood of confusion. Whilst a claimant only needs to indicate that consumers have a likelihood of being confused by the similarity of two marks, showing the court genuine consumer confusion via telephone call transcripts or online chat records helped TVIS establish that the threshold had been reached.
The decision should also remind those taking part in litigation to plan their time effectively. When participating in the Shorter Trials Scheme, parties should ensure that they allow enough time to provide the court with the entirety of their argument. Otherwise, they risk being unable to sway in the court in their favour.
With thanks to Ali Zaghloul, trainee solicitor, for co-authoring this article.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
