The English Court of Appeal has reversed a High Court decision in a trade mark infringement case, which addresses issues including similarity and the assessment of likelihood of confusion.
The case was brought by TVIS, which owns a UK trade mark for VETSURE for goods and services including pet insurance. The defendants, Howserv, began to sell pet insurance under the sign PETSURE in 2021 and also applied for a trade mark registration.
At first instance, Deputy High Court Judge Ian Karet found there was no likelihood of confusion. His conclusion was based in part on the findings that the descriptive nature of the words had a significant impact on the overall impression made by the marks and that evidence said to show actual confusion actually showed largely administrative errors.
Errors identified
Writing the Court of Appeal judgment, Lord Justice Arnold identified a number of errors in the judge’s assessment and concluded that there was a likelihood of confusion.
In particular, Arnold LJ said that Deputy Judge Karet erred in holding that VETSURE and PETSURE were “not conceptually similar” and “for different concepts”. Arnold LJ found they the judge had:
muddled the assessment of conceptual similarity between the sign and the mark with the assessment of distinctive character of the mark;
not explained what the concepts were or how they differed;
erred regarding the relevance of conceptual similarity in cases of aural and visual similarity.
Further, Arnold LJ criticised the judge’s reasoning regarding the distinctive character of the mark. Arnold LJ found that VETSURE had a low-to-medium level of inherent distinctive character and that it had acquired some additional distinctive character so that, at the relevant dates, it had “a moderate level of distinctive character”.
Arnold LJ also said there was force in the criticisms that the judge failed properly to take into account imperfect recollection, to consider likelihood of confusion from the perspective of consumers amongst whom VETSURE has a reputation and to give effect to the interdependency principle given that the services in this case are identical.
Examples of confusion
The final piece of the jigsaw was evidence of actual confusion relied on by TVIS, which was rejected by the judge at first instance.
Arnold LJ said that a number of the instances did show relevant confusion, adding: “Even if that is open to doubt, they certainly demonstrate, as I have explained, that both the Trade Mark and the Sign are regarded by consumers as brand names, not descriptors, and that the supposed conceptual difference between them does not avoid the potential for confusion.”
Moreover, Howserv had only been trading using PETSURE for little over two years and there had not been extensive efforts to find evidence of confusion. The number of instances of confusion was therefore not negligible.
Finally, the Court said that VETSURE was not “largely descriptive”, there was no reason to think that the average consumer of pet insurance would be alert for the difference between VETSURE and PETSURE and the evidence of actual confusion confirmed that some consumers did not notice this difference.
What does this mean?
The Court of Appeal will only reverse first instance findings if there are errors of law or principle. A number were identified in this case.
But perhaps the most important finding related to the evidence of actual confusion, which had been largely dismissed by the first instance judge. As the Court of Appeal explained, there was not sufficient time during the trial (held under the Shorter Trials Scheme) for the parties to make oral submissions on this issue. At appeal, they did so and that enabled the Court to undertake a detailed analysis of several instances of alleged confusion.
While efforts to streamline litigation are very welcome, this case highlights that parties need to ensure there is enough time for all relevant arguments to be heard and that trial schedules provide for this. Otherwise the wrong decision may result.
To find out more about the issues raised in this blog contact Rosie Burbidge