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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Tvis Ltd v Howserv Services Ltd & Ors [2024] EWCA Civ 1103 (02 October 2024) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2024/1103.html Cite as: [2024] EWCA Civ 1103 |
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CIVIL
DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE,
BUSINESS AND PROPERTY COURTS,
INTELLECTUAL PROPERTY LIST (ChD)
Ian Karet sitting as a Deputy High Court Judge
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE ARNOLD
and
LORD JUSTICE PHILLIPS
____________________
TVIS LIMITED |
Claimant/Appellant |
|
- and |
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(1) HOWSERV SERVICES LIMITED (2) HOWSERV LIMITED (3) TICORP LIMITED |
Defendants/Respondents |
____________________
Simon Malynicz KC and Chris Aikens (instructed by Simmons & Simmons LLP ) for the Respondents
Hearing date : 30 July 2024
____________________
Crown Copyright ©
Lord Justice Arnold:
Introduction
Factual background
The market
TVIS and the Trade Mark
Howserv and the Sign
The dispute
The trial
The legislative framework
Assessment of the likelihood of confusion: basic principles
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
The judge's judgment
The average consumer
Visual, aural and conceptual similarity
"83. The words VET and PET mean different things, and the average consumer will, perceiving the marks as a whole, understand that. The marks are not conceptually similar; each refers to a different descriptive concept and the average consumer will distinguish them from one another. Both marks are descriptive and narrow in scope. The common feature between the signs is the word SURE, which is itself descriptive.
84. This is case where the descriptive nature of the words will have a significant impact on the overall impressions made by the marks. The average consumer would know that descriptive terms are commonly used in this field so that VET and PET are unlikely to indicate any particular source of pet insurance. The marks are for different concepts and that indicates the absence of a likelihood of confusion."
The distinctive character of the Trade Mark
"82. The mark VETSURE would be perceived by the average consumer as made up of two well-known words, VET and SURE. VET is descriptive of veterinary services and SURE will be understood to describe insurance services. The VETSURE mark is thus a combination that is itself descriptive.
85. The VETSURE mark has a descriptive nature and is used in a market in which many providers use descriptive or allusive names, as illustrated above. As a result it does not have a highly distinctive character "
"In my view the Claimant has not established enhanced distinctive character in the VETSURE mark. The VETSURE business has a relatively small share in a market in which there are numerous providers. It has been trading since 2009 through a network of veterinary practices using a brand that itself contains the word 'vet'. There is thus a directly descriptive element in the VETSURE name which is present in the use and presentation of the mark. The business has gained some press coverage and awards, but both of these are available for businesses that seek to promote themselves that way, and they do not in this case show the enhanced character required. The Claimant also relies on positive customer reviews, but these do not in my view establish the reputation in the circumstances of the use made of the mark."
"In my view the VETSURE mark has the required reputation, but the strength of the mark is not high. It is made up of descriptive elements and it exists in a market full of signs containing descriptive references. The mark indicates that it is for a service relating to vets. It has some character acquired through use, but as a descriptive mark, it will have started from a low base. "
Evidence of actual confusion
"167. The great majority of these examples do not show confusion of the type required for section 10(2) of the Act. They show 'administrative' errors of the type described in The European v The Economist [1998] FSR 283. This is not surprising given that names in issue contain descriptive elements relating to the services provided.
168. There are thus incidents of mis-naming by consumers and a number of cases of mistakes occurring in a vet's practice. The picture that they give is consistent with the fact that both parties' names are of a descriptive nature and that their elements may be interchanged by mistake but there does not appear to be confusion as to the parties providing the services. A number of the callers have not taken care before initiating a call and a number have made mistakes based on internet searches. It is not apparent that they are paying attention to the matter at hand in a way that the average consumer would.
169. There is no indication from this selection that the average consumer would be confused in the relevant sense. I note that the absence of actual witnesses is not decisive on the question of confusion; the court may still conclude that there is likelihood of that. In this case the evidence shows the opportunity for mistakes to arise in various ways.
170. In some of the cases it is not possible to conclude what has happened or if there was confusion. It does appear there was confusion in a small number of instances, but I conclude from the evidence overall that there was no likelihood of confusion. I note that a similar result was reached in W3 v easyGroup and easyGroup v easylife [2021] EWHC 2150 (Ch). The picture here is consistent with people making administrative errors."
Overall assessment
"84. This is [a] case where the descriptive nature of the words will have a significant impact on the overall impressions made by the marks. The average consumer would know that descriptive terms are commonly used in this field so that VET and PET are unlikely to indicate any particular source of pet insurance. The marks are for different concepts and that indicates the absence of a likelihood of confusion.
86. Looking at the matter in the round I conclude that there is not a risk that the public might believe that the goods and services come from the same or economically linked undertakings. The use of the VETSURE mark in a network is of little relevance to the average consumer because that network is for vets and purchasing products.
87. The Claimant relied on consumers' imperfect recollection when buying pet insurance. However, the market for pet insurance is full of names that relate to pets and their care and I do not think that it is likely that these two will be confused in a trade mark sense more than any other descriptive and allusive names."
"178. The use of PETSURE does not in my view give rise to a likelihood of confusion on the part of the public. As Millet LJ noted in The European at 289:
' . . . Where descriptive words are included in a registered trade mark, the courts have always and rightly been exceedingly wary of granting a monopoly in their use.'
This is such a case.
179. The documents which I reviewed said to show actual confusion are consistent with that. The evidence that I considered is in line with my finding that there is no such likelihood. The instances are very largely of administrative errors. The small number that show actual confusion do not show a likelihood of confusion arising."
Standard of review on appeal
Grounds of appeal
Ground 1: Visual and aural similarity
Ground 2: Conceptual similarity
Ground 3: Distinctive character of the Trade Mark
Ground 4: Likelihood of confusion
Grounds 8 and 10: Inadequate reasons
Ground 14: Assessment of the evidence of actual confusion
"RM: OK. Can I just check that you are definitely Vetsure, not Petsure?
TVIS: Nope, we are definitely Vetsure. There is a company called Petsure, but that's not us (laughs).
RM: I know, I'm getting so confused because I got an email from Petsure and I thought Oh, Oh gosh. Ok, so I'll look for Vetsure. OK brilliant."
"121. The Claimant says that the email had caused the customer to think that she had a policy with Petsure. Having considered this exchange, I disagree. The transcript indicates that the caller was able to distinguish between the parties and had called the right place.
122. It is clear from this example and others below that the staff at Petsure sometimes mentioned the Claimant to callers who were uncertain or mistaken in their calls. I do not take that as proof of a likelihood of confusion on the part of the customers."
"Mrs W: I do have a quote. Just I think I do, oh no I don't, no wait a minute I'm confused now.
VW: Don't worry.
Mrs W: I've been searching everywhere for different prices. We're with Petplan at the moment, umm we have been for seven years but it's gone up ridiculously. Umm, so you're Petsure are you?
VW: We're Vetsure.
Mrs W: Vetsure, no I haven't got a quote, I haven't got a quote from you, no.
VW: OK, so Petsure are a different company completely.
Mrs W: Right, yeah, you're Vet yeah that's fine, yeah I haven't got your quotes."
"This does not appear to be an instance of confusion, but rather mis-naming. The customer appears to have called the Claimant deliberately and expected a call back from them."
"We are Vetsure not Petsure so I think that's where the error is. The claim form you have used is ours but we are a different company to Petsure and have no link to them or their customers."
"TVIS: It's not one of our policy numbers. Does it have the name of where their umm policy is?
Practice: Er, it just says My Petsure.
TVIS: Oh, is it Petsure?
Practice: Ah possibly. We've got it as My Petsure where's ah Vetsure and Petsure
TVIS: Yeah .. what it is, it's just we, cos obviously it's, it's a close name, but erm
Practice: Yeah it's going to get confusing, isn't it?
TVIS: it would be just really helpful to know if it was the policyholder that provided the claim form or whether it was you guys that may have just printed it for them.
Practice: Yeah. I'm just seeing if it's one that we can print out from their website, because if it's not then we wouldn't have been able to. Ah yeah, so it is one that we could download, so potentially it was one of us that did it or possibly the owner. I'm not sure. I can't say for sure to be honest.
they [sc. claim forms] just get handed in at reception
so it could be .. aw that's weird, so on our reception list of when it was handed in, we've written Petsure, but then we've got the form for Vetsure so I've got a feeling that we might have done it and when we've googled Petsure, it possibly came up with Vetsure first and they've just gone with the first one that came up.
TVIS: No that makes sense, no, that's absolutely fine. So, erm, obviously I'll just disregard that one because I did do a search as well just to make sure "
"The practice suggests that they may have made an error 'when we googled Petsure [to download a form] it possibly came up with Vetsure first and they've just gone with the first one that came up'."
"Oh hi, I've just started a policy with you and I've woken up this morning and gone, I've put that she was spayed on that policy and she's not spayed yet "
"Ms S: Hang on, I'm on, I'm phoning the wrong number. I'm sorry, not only do I not know that my dog is not spayed, I don't know who she is insured with.
TVIS: Are you sure you don't want me to check?
Ms S: No, I'm sure.
TVIS: OK.
Ms S: It's the 'sure' that got me going. You're Vetsure and I think I've just insured her with Petsure. So that's what happened."
"Have been trying to get a 'Pet Health Plan', which is not health insurance. Have attached a photo from our vets."
The attached photo was of a Vetsure-branded Pet Health Plan poster. Howserv replied:
" From the looks of the attachment, it looks like you are looking for Vetsure as appose [sic] to Petsure which is us. I am afraid that we have no relation to either the Pet Health Plan or Vetsure. I do hope you can get it sorted."
BP replied:
"It appears that I was having one of those moments, thank you for replying.
I found the site and signed up."
"The sixteenth is a series of messages by which a customer PG cancels their insurance with Petsure. She said 'I accidentally went for the wrong insurance. I was after Vetsure because they are linked to our vets'. The customer refers to this as an accident, but it appears in this case that there was some confusion."
"as the judge had noted himself at [59], the parties were small players in the market for pet insurance. that should have indicated something to him, namely that the presence of any cross-confection of this kind was not simply the result of the ubiquity of either player in the market. These were two relatively small ships in a vast ocean, and yet instance after instance of them crashing into each other."
Re-evaluation of likelihood of confusion
Disposition
Lord Justice Phillips:
Lord Justice Newey: