The Court of Appeal has upheld an appeal against the High Court’s dismissal of a claim for infringement of the trade mark VETSURE, registered for pet insurance, through the defendants’ use of the PETSURE sign, which was registered as a trade mark for the same goods.
Arnold LJ, giving a judgment with which the rest of the court agreed, concluded that there was a likelihood of confusion on the part of the public between the claimant’s VETSURE mark and the defendants’ PETSURE sign (the sign) and that, consequently, the PETSURE mark was invalid under section 5(2) of the Trade Marks Act 1994 (TMA) and that there was infringement under section 10(2) of the TMA and passing off.
Arnold LJ’s reasoning included that the judge had erred in:
- Finding that the sign and the VETSURE mark were not conceptually similar. There was a considerable conceptual similarity. Further, contrary to what the judge thought, it was unnecessary for the sign and the mark to be conceptually similar for there to be a likelihood of confusion.
- Finding the VETSURE mark descriptive. Rather, the mark had a low-to-medium level of inherent distinctive character and, overall, a moderate level of distinctive character at the relevant dates.
- Assessing the evidence of actual confusion. The errors included that the judge had wrongly dismissed many of the instances relied upon as “mistakes” or “administrative errors”, and that it was inconsistent with the judge’s finding that there was confusion in a small number of instances for him to conclude that there was no likelihood of confusion. It was difficult to see why the existence of a number of instances of actual confusion was not probative of a likelihood of confusion in this case, where the parties were small players in the pet insurance market, the defendants had only been trading under sign for a little over two years, and no particular efforts had been made to find evidence of confusion other than a review of disclosure
Re-evaluating the likelihood of confusion, Arnold LJ concluded that the visual and aural similarities between the sign and the VETSURE mark, the mark’s distinctive character and the interdependency principle all pointed to a likelihood of confusion taking the possibility of imperfect recollection into account. The conceptual counteraction principle was not applicable. If anything, the conceptual similarity between the sign and the mark supported the existence of a likelihood of confusion.
If you are facing a claim for trade mark infringement, and have received a TM7/TM7a or a letter before action, get in touch.
(TVIS Ltd v Howserv Services Ltd and others [2024] EWCA Civ 1103 (2 October 2024).
Source: Practical Law