VETSURE v PETSURE

The long-running dispute between the marks VETSURE and PETSURE appears to have now come to an end, with the Supreme Court having recently refused a request for permission to appeal against the decision of the Court of Appeal in the dispute.

In a surprising first instance decision in 2023, the High Court had found that there was no likelihood of confusion between VETSURE and PETSURE, on the basis that the marks were conceptually different and otherwise largely descriptive, despite being visually and aurally similar. The judge also gave relatively short shrift to evidence of actual confusion disclosed by both parties, which included examples of transcripts of phone calls where customers would waver between references to VETSURE and PETSURE, or instances of incorrect insurance policy claim forms being filed – this was somewhat controversial as it seemed to set an insurmountably high threshold to prove actual confusion.

TVIS was granted permission to appeal the decision on the likelihood of confusion point to the Court of Appeal (CA), and the CA handed down their judgment in early October 2024.

The CA allowed the appeal and found that there was in fact a likelihood of confusion in the case. Led by Lord Justice Arnold, the CA provided some welcome clarity by confirming that conceptual differences will only counteract visual and aural similarities in exceptional cases (of which this was not one). It is worth noting that the CA specifically found that the respective marks were in fact conceptually similar, undoubtedly reassuring all those who were left wondering why and how “vets” and “pets” were apparently conceptually unrelated to one another, following the first instance decision.  

Furthermore, the CA found that the evidence was found to be persuasive to show actual confusion, which will undoubtedly come as a relief to brand owners and attorneys. This also reaffirms the importance of detailed and extensive documentation of potential consumer confusion, since proof of actual confusion could help take a decision over the line in terms of finding a likelihood of confusion. Particularly where a mark has descriptive connotations, as in this case, such evidence may be helpful to illustrate how consumers perceive the marks (i.e. as a brand name, instead of a descriptor).

The refusal of the Supreme Court to entertain a further appeal against the CA’s decision will hopefully now draw a line under this matter, leaving the decision of the CA to stand as a helpful and persuasive authority regarding the assessment of confusion.

Background

The Claimant, TVIS, is the owner of the VETSURE trade mark, founded in 2009 and specialising in pet insurance.

The Defendant, Howserv, is the owner of the PETSURE trade mark.  The company was founded in 2004, initially selling travel insurance, but in 2020 introduced a range of pet insurance options under the name PETSURE.

TVIS commenced proceedings to invalidate Howserv’s trade mark registration for PETSURE, and separately claimed for trade mark infringement – they relied on the same grounds for both actions, namely, likelihood of confusion, reputation and passing off.

High Court Decision

The Deputy High Court Judge, Ian Karet, considering the case at first instance dismissed all claims made by TVIS. TVIS was denied permission to appeal the decision in relation to reputation and passing off.

In relation to likelihood of confusion, the Court’s key findings were as follows: 

• The respective goods and services were identical (e.g. insurance services) or highly similar (e.g. veterinary services, dietary supplements for animals).  
• The respective marks (VETSURE vs PETSURE) were visually and aurally similar. 

However, the Court found that a likelihood of confusion did not arise because: 

• The marks were conceptually dissimilar. Each of the component words ‘VET’ and ‘PET’ (and indeed ‘SURE’) referred to descriptive concepts, such that consumers would be able to distinguish them.
• Descriptive and allusive names were common in the pet insurance sector. 

In relation to the infringement claim, the Court was also presented with evidence of actual confusion including phone call transcripts, emails and online chats, as examples of customers referring to ‘VETSURE’ as ‘PETSURE’ or vice versa, or submitting insurance claim forms to the incorrect entity. The Court held that the majority of these mistakes were attributable to ‘administrative’ errors due to the low distinctiveness and descriptive nature of the respective marks, as well as an insufficient degree of attention falling below that which can be expected from the average consumer (moderate, in this context). In particular, the Court noted that such consumers had either failed to take care before placing calls, or made mistakes based on internet searches. Ultimately, there was no finding of infringement.

The Court of Appeal

Assessment of the respective marks

The CA started out by affirming that a relatively high degree of visual and aural similarity is not determinative of whether there is likely to be confusion, and vice versa in the event of a relatively low degree of similarity. The assessment of conceptual similarity and distinctive character should be carried out in distinct stages, though they may be linked.

The CA were critical of the Deputy High Court Judge’s failure to identify the respective concepts ‘VET’ and ‘PET’, as well as to explain why they were different. This therefore undermined the validity of his conclusion and justified intervention by the CA. Lord Justice Arnold then carried out his own assessment and found that the concepts were in fact similar – i.e. PETSURE would be understood to mean insurance for pets, which is essentially insurance for veterinary services. He also noted that, in any case, conceptual similarity is not a prerequisite for finding a likelihood of confusion. In closing, he also reaffirmed the exceptional nature of ‘conceptual counteraction’ (i.e. where conceptual differences can counteract visual and aural similarities), such that it would only apply where “at least one of the signs at issue has, from the perspective of the relevant public, a clear and specific meaning which can be grasped immediately by that public”.

The descriptive nature of the component words ‘VET’ and ‘SURE’ were not disputed, but it was held that the same would not automatically apply to the combination VETSURE – in this case, the combination should have been seen as allusive of pet insurance services but not directly descriptive. Crucially, Lord Justice Arnold found that the Deputy High Court Judge’s assertion of descriptiveness impacted his assessment of the distinctiveness of TVIS’s VETSURE mark as it implied that the mark was inherently not distinctive. By contrast, the CA held that VETSURE had at least a low to medium level of inherent distinctive character.

Assessment of the evidence of actual confusion

Unlike the first instance judge, the CA had the benefit of oral argument relating to the evidence of actual confusion disclosed by the parties. In evaluating the evidence, the CA found that it illustrated in fact that consumers confused the respective marks due to the visual and aural similarities of the marks. In particular, this confusion caused some customers to be unable to identify that the marks were associated with separate entities, such that TVIS was frequently required to explain that VETSURE was a different company from PETSURE.

In summarising the findings on the evidence of actual confusion, Lord Justice Arnold found that this evidence showed that consumers regarded both marks as brand names instead of descriptors, and that the supposed conceptual difference did not avoid the potential for confusion. By contrast to the first instance judge, he also found that these customers were not atypical or especially careless. In relation to this evidence, he quoted a statement by TVIS’s counsel speaking of both parties: 

“These were two relatively small ships in a vast ocean, and yet instance after instance of them crashing into each other.”

As a final point, Lord Justice Arnold dealt with the principle stated in Reed Executive plc v Reed Business Information Ltd, where consumers are held to be more alert to small differences between marks which are largely descriptive. In this case, he considered that VETSURE was not largely descriptive. Furthermore, while the market was crowded with PET-prefixed names, there was only one other VET-prefixed name and no other -SURE suffixed names. As such, there was no basis for average consumers to be particularly alert to the differences between VETSURE and PETSURE, and this was in fact supported by the evidence of actual confusion.

There was therefore a likelihood of confusion, and so the CA allowed the appeal, finding that Howserv was liable for trade mark infringement and passing off, and that Howserv’s trade mark registration of PETSURE was invalid.