TVIS Ltd V Howserv Services Ltd [2023] EWHC 2589 (Ch)
This was a claim for trade mark infringement, passing off and invalidity of the Defendant’s trade mark brought under the Shorter Trials Scheme. The Claimant and the Defendants are both providers of pet insurance. The Claimant operates under the name VETSURE; the Defendants under the name PETSURE.
Ian Karet, sitting as a Deputy High Court Judge, dismissed each of the claims. Key to the Court’s decision was that the marks were highly descriptive and were not conceptually similar.
The Court reaffirmed the following principles of general interest:
- descriptive marks which are not invalid for lack of distinctive character nevertheless have a very narrow scope of protection;
- in a market where highly descriptive brand names are commonplace, it is difficult for any such name to gain more than a minimal degree of distinctive character or reputation;
- the descriptive words within a mark are not perceived by the average consumer as an indication of origin.
Although the Claimant put in evidence a number of alleged instances of actual confusion, the Judge dismissed almost all of them and highlighted the important distinction between actual confusion and mere administrative errors (e.g. misspellings where the right party is nevertheless contacted). The few potentially relevant instances of actual confusion were not enough to give rise to a likelihood of confusion.
Chris Aikens appeared as junior counsel for the successful Defendants.