TVIS Limited v Howserv Services Limited & Ors

Trade mark protection does not confer a monopoly over descriptive or allusive elements. Likelihood of confusion must be assessed globally through the eyes of the average consumer, considering the marks as wholes and taking account of their distinctive and dominant components. Similarity in appearance or sound is insufficient where the marks convey different descriptive concepts and share only a weak, descriptive element. Administrative mistakes and misnaming do not necessarily establish trade mark confusion. For a link under section 5(3) or section 10(3), the later sign must call the earlier mark to mind in the relevant legal sense. A reputation alone is insufficient. Passing off likewise requires a misrepresentation likely to cause confusion or deception as to origin.

TVIS Limited, a specialist pet insurer using the VETSURE mark, brought claims against companies in the Staysure Group. The defendants used and registered PETSURE for pet insurance and related services. TVIS sought invalidity of the PETSURE registration under sections 5(2), 5(3) and 5(4)(a) of the Trade Marks Act 1994, infringement under sections 10(2) and 10(3), and relief for passing off.

The court considered the similarity of the marks, the descriptive character and reputation of VETSURE, evidence of alleged actual confusion, the defendants’ marketing and alleged intention to take advantage, and the relevance of the parties’ businesses and networks.

1. Disposition. The claims for invalidity, infringement and passing off failed. The claims concerning the claimant’s other marks also failed.
2. Section 5(2). PETSURE and VETSURE were visually and aurally similar and covered identical or similar services. The Class 5 goods were also similar to veterinary services because they shared purpose and consumers. However, both marks combined descriptive elements. VET and PET conveyed different concepts, while SURE was descriptive of insurance. The marks therefore had limited distinctive character and did not create a likelihood that consumers would believe that the services came from the same or economically linked undertakings.
3. Section 5(3). VETSURE had the necessary reputation, but its strength was not high. The descriptive nature of the mark and the crowded market meant that PETSURE did not call VETSURE to mind in the required sense. There was consequently no link, dilution or unfair advantage. Due cause did not need to be considered.
4. Passing off. The claimant owned goodwill in VETSURE for UK pet insurance, but PETSURE was not likely to cause confusion or deception as to origin. The claim therefore failed and damage did not arise.
5. Infringement. The same principles applied to actual use from July 2021. Evidence of calls, emails, claim forms and online searches showed mainly administrative errors or misnaming, not the legally relevant confusion required by section 10(2). The evidence did not establish enhanced distinctive character, a likelihood of confusion, a link or relevant injury under section 10(3). The defendants’ adoption of PETSURE because it fitted the STAYSURE brand also did not establish an intention to free-ride.