Lessons from the Court of Appeal:
In a recent Court of Appeal ruling, TVIS Limited, trading as Vetsure, won its trade mark infringement and passing off case against Petsure, another pet insurance provider. This decision overturned the High Court’s earlier judgment and has significant implications for trade mark law, particularly in cases involving similar business names.
The case highlights the importance of trying to protect your brand through trade marks, even when the words in question may seem descriptive or generic. It also demonstrates how confusion evidence can play a key role in determining the outcome of trade mark disputes.
The Case: Vetsure vs. Petsure
Background
Vetsure, established in 2009, registered the trade mark “VETSURE” in 2010 to cover its pet insurance services. Petsure, a brand that entered the pet insurance market in 2020, registered its own mark for “PETSURE.” This led Vetsure to bring a case against Petsure for trade mark infringement and passing off, arguing that the similarity between the two names would confuse customers.
High Court Decision
Initially, the High Court ruled in Petsure’s favour, finding that:
- Both marks were descriptive of pet insurance, limiting the protection Vetsure could claim.
- The marks were conceptually different.
- Vetsure had a reputation in the market but had not acquired distinctive character.
- Out of 41 instances of confusion presented by Vetsure, only one was found to be genuine.
Court of Appeal Decision
The Court of Appeal reversed the High Court’s decision, identifying several key legal errors, including:
- The two marks were conceptually similar, as both “VETSURE” and “PETSURE” could be understood as describing pet insurance.
- The VETSURE mark, while descriptive, was a unique “portmanteau” (a combination of words) and had at least a low-to-medium level of inherent distinctive character.
- The trial judge’s dismissal of the confusion evidence was wrong. Given that both companies were small players in the market, even a small number of confusion instances was significant.
Key Takeaways for Trade Mark Owners
1. Conceptual Similarity Matters
The Court of Appeal emphasised that even if two marks are visually or aurally different, they can still be found to be confusingly similar if they share a conceptual link. In this case, both marks alluded to pet insurance, making them conceptually similar enough to cause confusion among consumers.
2. Descriptive Words Can Form Distinctive Marks
Even though “VET” and “SURE” are descriptive terms on their own, their combination into “VETSURE” was seen as creating a unique, non-descriptive mark. This highlights the importance of securing protection for even seemingly simple names—especially when they become associated with your brand over time.
3. Evidence of Confusion Is Crucial
The Court of Appeal’s decision reinforces the importance of confusion evidence in trade mark cases. While confusion evidence may be difficult to gather, it can be critical to the success of a claim. The court found that even small players in a crowded market can show confusion between similar marks, particularly when both brands are relatively new.
4. The Court of Appeal Can Overturn Factual Findings
This case is a reminder that if a trial judge makes a legal error, the Court of Appeal may reassess the evidence and reach an entirely different conclusion. It’s a strong indicator that higher courts are willing to dig into the facts, particularly in trade mark disputes where confusion is the central issue.
What This Means for Your Business
For business owners, this highlights the importance of registering trade marks to protect your brand. Even if your business name includes descriptive words, combining them in a unique way can create a distinctive trade mark that sets your brand apart and safeguards it against competitors.
There are times when the Intellectual Property Office (IPO) rejects trade mark applications on the basis that the mark is not distinctive enough and is in fact descriptive. In these instances National Business Register has a unique product called Business Name Protection which gives a level of protection not generally afforded to descriptive words. This means that your business name will be covered against its name being copied (passing off) in the sector and region that you trade. It does not give you the gold standard exclusive use that a trade mark registration does, but this is a level of protection that can be really reassuring to business owners as should there be a passing off case, the first £10,000 of legal work undertaken is covered.
At National Business Register, we specialise in helping businesses protect their intellectual property. Whether you’re looking to register a trade mark, protect your business name, or understand your rights in a dispute, our expert team is here to guide you through the process.
Take Action Now
Don’t wait until your brand is at risk. If you’re concerned about potential infringement or want to secure your intellectual property rights, contact us today to discuss how we can help protect your business with our trade mark registration services. Let us ensure your brand is safeguarded, so you can focus on growing your business. You can contact us by emailing info@nbrg.co.uk or calling 0800 069 9090.
