Descriptiveness of earlier mark mitigates against infringement: VETSURE v PETSURE (HC)

What has happened?

• The High Court of England & Wales has held that the mark PETSURE is not confusingly similar to the mark VETSURE – both registered and used for pet insurance among other goods/services.

• The High Court dismissed infringement, passing off and invalidity claims on this basis. 

• A key element of the ruling was that the VETSURE mark had a low level of inherent distinctiveness, meaning that it was given a very narrow scope of protection. 

• The case is a good example of how marks that are seemingly very close (only one letter apart) that are registered/used for identical services can nonetheless be deemed not in conflict because the earlier right is descriptive or weakly distinctive. It is hard to think of another case in which the marks are so close yet there has been a finding of no likelihood of confusion (perhaps the recent EASYOFFICE v. EASYOFFICES case). 

• Interestingly, the court considered evidence of alleged instances of actual confusion in the form of emails, and transcripts of telephone calls and online chats, as well as evidence from the defendant's own disclosure. The court found that, by and large, the evidence merely showed administrative errors (as opposed to customer confusion as to trade origin). The decision highlights that the court will not easily infer actual confusion absent cogent witness evidence. 

Want to know more?

Background

The claimant, TVIS Ltd, was founded in 2009 and is a specialist insurer providing pet insurance under the brands VETSURE and VETSURE PET INSURANCE. The claimant relied on its VETSURE marks in connection with Classes 16 (printed matter), 35 (advertising, business management), 36 (insurance) and 44 (medical and veterinary services), as well as goodwill in the VETSURE name. 

The defendant, Howsery Services, is a part of the StaySure Group launched in 2004 and moving into the pet insurance market in 2020 under the name PETSURE. It had registered the mark PETSURE in connection with Classes 5 (dietary supplements for animals), 36 (pet insurance) and 44 (advisory services relating to the care of pet animals; animal healthcare services). 

The issues were:

• The validity of the PETSURE registration under sections 5(2), 5(3) and 5(4)(a) of the Trade Marks Act 1994 in view of the earlier VETUSRE registration.

• Infringement of the VETSURE registration under sections 10(2) and 10(3) of that Act.

• Passing off by the use of the PETSURE name.

Validity of the PETSURE registration

In considering the validity of the PETSURE registration, the court considered the following factors (among others).

Average consumer

The parties initially disagreed on the nature of the average consumer but (at trial) it was agreed that the average consumer was a pet owner with an average level of attention. They will see that the market contains many providers with names that refer to pets and their care. The average consumer would understand that the word “sure” in the name is liable to be understood as “insurance” (relevant because there are a substantial number of insurance providers with names that end in “sure”). 

Distinctiveness of the earlier mark

The descriptive nature of VETSURE and PETSURE was considered in detail. Whilst the court considered that there are no general rules as to how descriptiveness should be taken into account, it was clear that it should be done. The court referred to Nicoventures Holdings Ltd v The London Vape Co Ltd which said that a descriptive term makes a finding of confusion harder to establish and it will somewhat downgrade the significance of conceptual similarity in the assessment of confusion insofar as the mark is descriptive of the goods and services in question.

Assessment of similarity

The court decided that PETSURE and VETSURE were visually and aurally similar, but conceptually dissimilar. It was said that SURE in both marks was descriptive of insurance services which lessened the conceptual similarity (as per the Nicoventures case mentioned above). 

Imperfect recollection

Interestingly, the claimant had relied on consumers’ imperfect recollection when buying pet insurance to assert a likelihood of confusion. The judge did not consider this relevant, saying that the pet insurance market is full of names relating to pets and pet care and that the two would not be confused in a trade mark sense more than any other descriptive or allusive names.

Likelihood of direct confusion

Given the descriptive nature of the marks (including the shared "sure" element) and the conceptual differences between them, the judge found no likelihood of confusion despite the goods/services in question being identical or similar. The court found that 'in the round' there was no risk that the public might believe that the goods and services come from the same or economically linked undertakings. 

Likelihood of indirect confusion

"Direct confusion" occurs where consumers mistake the sign complained of for the earlier registered trade mark. "Indirect confusion" occurs where no such mistake occurs but (nonetheless) consumers believe that goods or services denoted by the sign come from the same or economically linked undertakings as goods/services denoted by the mark. Direct confusion involves no process of reasoning. Indirect confusion is something along the lines of "the later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark."

The court gave three examples of indirect confusion taken from the leading LA Sugar case plus two others:

• where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume no one else but the brand owner would use it in a trade mark at all 

• where the later mark simply adds a non-distinctive element to the earlier mark that you would expect to find in a sub-brand or brand extension (eg the added element is LITE, EXPRESS or MINI) 

• where the earlier mark comprises a number of elements and a change of one element appears entirely logical and consistent with a brand extension (e.g. ‘FAT FACE’ to ‘BRAT FACE’)

• where the later mark incorporates the earlier mark (or a similar sign) in a way that will lead consumers to believe the goods or services have been co-branded and that there is an economic link between the earlier and later owners

• where there is 'wrong way round confusion' ie where consumers believe the goods or services denoted by the earlier mark come from the same undertaking as the goods or services denoted by the later sign (or an economically linked undertaking).

In this case, the court did not consider that the marks fell into any of the above categories or that consumers would otherwise believe that they came from the same or economically linked undertakings. Again, the fact that the VETSURE mark was weakly distinctive was a relevant factor.

Reputation claim

Whilst the VETSURE mark was found to have a reputation, the strength of that reputation was not high. Given the mark is made up of descriptive elements, existing in a market full of signs containing descriptive references, there was no detriment to distinctive character (dilution) (as no serious risk of injury) or unfair advantage (no high reputation). Notably, the court found that the marketing route of VETSURE (which was sold through vets(and not more widely) compounded the mark's descriptive nature.

Passing off

For similar reasons to those described above, the court found no actionable misrepresentation for a substantial proportion of consumers. 

The PETSURE registration was therefore found to be valid. 

Infringement of the VETSURE registration 

The relevant date for assessing infringement was July 2021, when the defendants started trading under the PETSURE name. The points decided in relation to the validity claim were applied again here, with a number of notable additional points considered by the court.

Direct confusion

The claimant argued that the method of marketing its insurance products would increase the likelihood of confusion. VETSURE was marketed through a network of veterinary practices, with vets being paid directly. The court found that it was not clear that the average consumer would consider the claimant's network to be a relevant network for the provision of insurance and it was not suggested that a vet would be the average consumer. 

Evidence of actual confusion

The owner of the VETSURE registration had submitted evidence of 25 instances of alleged actual confusion from its customers in the form of emails, transcripts of telephone calls and online chats, as well as evidence from the defendant's disclosure. No one had been called as a witness and the judge cautioned against the use of transcripts which might not be accurate. The judge held that only one piece of evidence indicated actual confusion. Examples of the judge's analysis of the evidence are below:

• "The fifth is a transcript of a call to the claimant from customer AW who mis-names the Claimant “Petsure”. But they are insured through Vetsure and have correctly called the Claimant. There is no confusion."

• "The ninth is a Petsure claim form that was mistakenly sent by a vet practice to the Claimant. There is no evidence from anyone explaining why that might have happened in this instance."

• "The sixteenth is a series of messages by which a customer PG cancels their insurance with Petsure. She said “I accidentally went for the wrong insurance. I was after Vetsure because they are linked to our vets”. The customer refers to this as an accident, but it appears in this case that there was some confusion."

• "The seventeenth is a mistaken claim form. The veterinary practice had mis-remembered that the customer was insured with Vetsure and submitted the form. When queried by Vetsure, the vet SA checked and realised their mistake.

• ""The twenty fifth is a transcript of a call to Vetsure from TR, an owner who had previously had insurance with Vetsure. She refers to having had “Petsure” before. The customer intended to call the Claimant and did so correctly. She does not appear to be confused."

The court gave little weight to the evidence, saying it was not possible to conclude what happened or if there was confusion. The judge stated that whilst "it does appear there was confusion in a small number of instances… I conclude from the evidence overall that there was no likelihood of confusion… The picture here is consistent with people making administrative errors." 

Intention to infringe

The claimant argued the defendant chose the name VETSURE to deliberately sail close to the wind. The court simply found instead that the name VETSURE was chosen in line with the defendant's existing business - STAY SURE. 

Passing off

There was no actionable misrepresentation.