Conceptual similarity

VETSURE had argued that the judge wrongly conflated the issues of conceptual similarity with assessment of the distinctive character of the VETSURE mark, and wrongly concluded that there was no conceptual similarity between VETSURE and PETSURE. On this point, the Court of Appeal found that the two marks actually have considerable conceptual similarity, as they would both be understood to describe pet insurance.

Distinctive character

The judge also erred in his assessment of distinctive character of the VETSURE mark. Just because there are two descriptive elements VET and SURE, this does not mean the combination is descriptive. In fact, VETSURE is an invented portmanteau word, which would not be found in any dictionary. It alludes to pet insurance, but it does not describe it.

Reputation

The judge found that VETSURE had a reputation but his findings on inherent/acquired distinctiveness were inconsistent and unclear. The Court of Appeal ruled that it is impossible to have obtained a reputation without at least some enhanced/acquired distinctiveness.

Given these errors, the Court of Appeal felt empowered to re-examine the likelihood of confusion assessment. In doing so, the court found that the judge failed to take into account the imperfect recollection of consumers; he also failed to consider the position from the perspective of consumers for whom VETSURE had a reputation.

In this case, there was evidence of confusion, which the judge had been largely dismissive of, but which the Court of Appeal thought was relevant. In context, the evidence of confusion was considered significant and the High Court was wrong to find no infringement.

This decision is hopefully a step in the right direction regarding the weight given to evidence of actual confusion. It also serves as a reminder that the combination of descriptive elements may not in itself be descriptive.

Case details at a glance

Citation: [2024] EWCA Civ 1103
Decision: dycip.com/ewca-civ-1103