12 December 2023
Brands Update - December 2023 – 5 of 8 Insights
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.
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:
Passing off by the use of the PETSURE name.
In considering the validity of the PETSURE registration, the court considered the following factors (among others).
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”).
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.
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).
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.
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.
"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 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.
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.
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.
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.
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.
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 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."
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.
There was no actionable misrepresentation.
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12 December 2023
by Fabio Lo Iacono and Louise Popple