The Court of Appeal is ‘Sure’ about likelihood of confusion

This matter deals with the Claimant’s (‘TVIS’) allegation of infringement and misrepresentation in relation to its “VETSURE” trade mark by the Defendant (‘Howserv’s’) “PETSURE” trade mark, used for pet insurance.

In the first instance decision, the claim was dismissed due to the marks being highly descriptive and “not conceptually similar”. The High Court reaffirmed the principles of descriptiveness, i.e. that descriptive marks offer a narrow scope of protection.

Despite TVIS putting in evidence of a number of alleged instances of actual confusion, the first instance Judge dismissed the majority of them as administrative errors instead of actual confusion. What remained was not enough to give rise to a likelihood of confusion.

TVIS appealed this decision arguing that the Judge at first instance had fallen into error by:

• Finding that the marks were orally and visually similar and not highly similar.
• Finding that VETSURE and PETSURE were ‘for different concepts’.
• Inconsistency in relation to findings on inherent and acquired distinctiveness. For example, the judge found that the mark had ‘reputation’ for the purposes of s10(3) of the Trade Mark Act 1994 (TMA 1994) but not that it had any acquired distinctiveness.
• Failing to find a likelihood of confusion.

On appeal the Court of Appeal (CoA) overturned the High Court decision in its entirety, finding that the trial judge had made a number of errors allowing for the CoA to reconsider the confusion evidence.

Conceptual Similarity

The CoA found that the High Court wrongly decided that the ‘VETSURE’ and ‘PETSURE’ marks were conceptually different. On the contrary, Arnold LJ for the CoA held that there was considerable conceptual similarity between the marks, as they would both be understood to describe insurance for pets, including insurance for veterinary services. Further, it was wrong to require a finding of conceptual similarity for there to be a likelihood of confusion. Whilst the similarity of the mark should be assessed visually, aurally and conceptually, it is not necessary for them to be confusingly similar in all three of these respects to find the marks to be confusingly similar.

Distinctive Character

The CoA found that again the High Court was wrong in its finding that the ‘VETSURE’ mark was descriptive and therefore lacked distinctive character. Arnold LJ held that the ‘VETSURE’ mark combining the two words ‘VET’ and ‘SURE’ was an invented “portmanteau” word and although allusive to pet insurance, did not describe it. Further, the CoA held that the High Court’s finding that the ‘VETSURE’ mark had no acquired distinctive character was incompatible with the finding that it had built up a reputation though its use.

Confusion

Once the CoA re-examined the actual confusion evidence it decided that the TVIS did in fact evidence relevant confusion which was probative of a likelihood of confusion. Arnold LJ adopted the submissions of ‘VETSURE’ that:

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

The CoA completely upended the first instance judgment identifying numerous errors within it.  The judgment highlighted the value of confusion evidence, how two essentially descriptive words (‘VET’ and ‘SURE’) can be combined together to form an invented “portmanteau” mark which may no longer be purely descriptive, and whether it is possible for a trade mark to have a reputation but no acquired distinctive character.

This decision is a useful guide to the circumstances in which the CoA is prepared to overturn a first instance trade mark infringement decision and in particular what errors at first instance may allow an appeal judge to reopen and reassess the crucial likelihood of confusion test.