TVIS Limited v Howserv Services Limited & Ors

Likelihood of confusion must be assessed globally, having regard to all relevant factors. A tribunal need not describe visual or aural similarity as high, medium or low. Descriptive components do not necessarily make an invented combination descriptive. Conceptual counteraction is exceptional and requires a clear, specific meaning immediately grasped by the relevant public. Evidence of consumer uncertainty or actual confusion may be probative, even where some incidents are administrative errors. A finding that a mark has the required reputation entails some acquired distinctive character. Where the services are identical, close visual and aural similarity, imperfect recollection, distinctive character and relevant confusion evidence may establish likelihood of confusion.

TVIS, proprietor of the VETSURE trade mark for pet insurance, challenged Howserv’s registration and use of the sign PETSURE. The Deputy High Court Judge rejected the claims under sections 5(2) and 10(2) of the Trade Marks Act 1994, together with the passing-off claim, holding that the marks were not confusingly similar. The judgment is reported at [2023] EWHC 2589 (Ch).

TVIS appealed against the consequential order. Permission was refused for appeals concerning sections 5(3) and 10(3). The central issue was whether the visual, aural and conceptual relationship between VETSURE and PETSURE, viewed with the other relevant factors and the evidence of actual confusion, created a likelihood of confusion.

Lord Justice Arnold gave the judgment, with Lord Justices Phillips and Newey agreeing. The appeal was allowed. The claims under sections 5(2) and 10(2) of the Trade Marks Act 1994, and the passing-off claim, succeeded.

1. The conclusion on likelihood of confusion was a multi-factorial evaluation. The Court of Appeal could intervene for an error of law or principle. The judge had made such errors in assessing conceptual similarity, distinctive character and the evidence.
2. There was no legal requirement to classify visual or aural similarity as high, medium or low. The tribunal must assess the nature and extent of the similarities and their interaction with the other relevant factors. Conceptual similarity and distinctive character are distinct assessments. A lack of conceptual similarity does not prevent confusion where marks are visually and aurally similar.
3. Conceptual counteraction is exceptional. It requires at least one sign to have a clear and specific meaning immediately grasped by the relevant public. Howserv accepted that this requirement was not met.
4. The fact that the component words are descriptive does not mean that an invented combination is descriptive. VETSURE was allusive rather than descriptive and had a low-to-medium inherent distinctive character. The judge’s finding that it had the required reputation for extended protection necessarily entailed some acquired distinctive character, giving it a moderate overall distinctive character.
5. Several incidents relied upon by TVIS showed consumer uncertainty, mistaken contact or use of the wrong claim form. Although some alleged confusion may be administrative error, the evidence demonstrated that the names were treated as brands and that their supposed conceptual difference did not prevent confusion. The number and significance of incidents had to be assessed in context, including the parties’ modest market presence, the relatively short period of coexistence and the limited search for evidence. The comparison with W3 Ltd v easyGroup Ltd was materially different.
6. The visual and aural similarities, moderate distinctive character, identical services, imperfect recollection, interdependency and evidence of actual confusion established a likelihood of confusion at both relevant dates. There was no separate basis for indirect confusion if direct confusion was absent, but direct confusion was established here.

• Court of Appeal (Civil Division): Allowed the appeal and held that the claims under sections 5(2) and 10(2) of the Trade Marks Act 1994, together with passing off, succeeded.
• High Court of Justice, Business and Property Courts, Intellectual Property List (ChD): Ian Karet, sitting as a Deputy High Court Judge, rejected the claims, holding that PETSURE did not create a likelihood of confusion. The decision is cited as [2023] EWHC 2589 (Ch).