TVIS Ltd v Howserv Services Ltd

Hearing dates: 11–14 July 2023

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

Introduction

This is an action concerning trade marks used for pet insurance. The Claimant claims that the Defendants have infringed their registered trade mark VETSURE by use of their sign PETSURE, and they apply for a declaration that the First Defendant's registration for PETSURE is invalid.

According to a Mintel report entitled “Pet Insurance, UK 2022” the UK market for pet insurance was predicted to be worth over £1.48 billion that year. Over 3.7 million pet owners obtained cover from a wide range of insurers. Policies for dogs were likely to cost around £400 and for cats around £250. In 2021 there were over one million claims on pet insurance policies.

The Mintel report says that the top 6 insurers hold 89% of the market. 42% of pet insurance policyholders hold their policy with a traditional general insurance brand. Pet owners use specialist brands for 31% of pet insurance.

The Claimant was founded in 2009. It is a specialist insurer providing pet insurance under the brands VETSURE and VETSURE PET INSURANCE. It also provides pet health plans (which may include vaccinations and flea and worm treatments) under the brand VETSURE PET HEALTH PLANS. The Claimant has a network selling directly to consumers through veterinary practices.

The Claimant relies on the following registered trade marks:

The Claimant also relied on its goodwill attached to the name VETSURE for pet insurance services.

At trial the parties addressed in detail only the first registered mark.

The Defendants are part of the Staysure Group, which was launched in 2004. They initially offered travel insurance, in particular for ‘hard to insure’ travellers. In 2020 when the Covid19 pandemic reduced dramatically the market for travel insurance, they moved into pet insurance under the name PETSURE. In October 2020 the Second Defendant applied to register PETSURE as a UK Trade Mark.

The First Defendant is the proprietor of UK Trade Mark No. 3539451 PETSURE. It is registered for the following goods and services: Class 5 — Dietary supplements for animals; Class 36 — Pet insurance; and Class 44 – Advisory services relating to the care of pet animals; animal healthcare services.

The issues at trial were:

i) Validity of the PETSURE mark under sections 5(2), 5(3) and 5(4)(a) Trade Marks Act 1994 (the “Act”):

ii) Infringement under sections 10(2) and 10(3) of the Act; and

iii) Passing off.

The Claimant addressed its claim in this order and encouraged me to follow that. The Claimant said that this was the logical order because the assessment of validity looks at an earlier date than infringement and is predominantly paper-based. Infringement is assessed at a later date and may involve a range of evidence. I have followed the Claimant's suggestion.

It was common ground that the Defendants began use of the PETSURE sign in July 2021 and have used it in relation to pet insurance. That is identical to a service for which VETSURE is registered. The Second and Third Defendants would be liable if the First Defendant was.

Philip Roberts KC and Jonathan Moss appeared for the Claimant and Simon Malynicz KC and Chris Aikens for the Defendants. I am grateful for their careful submissions.

Shorter Trials Scheme

The trial took place under the Shorter Trials Scheme, but it did not appear that either party really wanted to be subject to the limitations that involves, and the approach adopted and materials included on both sides went beyond what the Scheme is intended to achieve.

Two significant preliminary issues remained after the PTR because there had not been sufficient time to deal with them at that hearing. One was to strike out parts of a witness statement and the other was for the admission of substantial further disclosure; together those applications would have added a further half day to the trial.

There were over 20 files in the trial bundle. There were over 7,700 pages of disclosure documents. Just before trial, the Defendants had sought to serve a further bundle of over 900 new documents running to over 1,800 pages of transcripts of telephone calls – I discuss that below.

Only a few of the instances of alleged confusion were addressed in the witness statements. The parties thus asked me to review after the trial a significant volume of evidence that there was no time to address in the time allocated and I have not had the benefit of oral submissions on that evidence.

The matters in dispute were suitable for the Scheme and the parties could have made the case fit within the Scheme. However, that would have required a substantially different approach by both sides from a much earlier stage in the case.

Preliminary matters

Disclosure

The Claimant was highly critical of the Defendants' alleged failures to disclose documents relating to the choice of the PETSURE name or why, on the launch of the PETSURE business, many people mistook the Defendants' brand for some other. This was not restricted to VETSURE alone.

It appears that the Defendants' description to the court at a CMC of what materials would be reviewed was not accurate. That is unfortunate and should not have happened. However, the Claimant had an opportunity to cross-examine fully the Defendants' witnesses on this matter and, in particular, to put to them the allegation that the choice of the Defendants' name was intended to take advantage of the Claimant's work. The Claimant does not allege that the answers which the Defendants' witnesses gave, which I discuss below, were untrue.

The Claimant asks the court to draw adverse inferences from the lack of documents from the Defendants. I decline to do so. This is not a case where there appears to be a conspicuous absence of relevant documentation, as the Claimant alleges. I have seen the witnesses, and I have also reviewed numerous examples alleged to show confusion.

Further evidence

The Defendants sought very close to trial to introduce a further bundle of documents that were said to show that Petsure was linked to a number of third parties as well as the Claimant. The argument, in effect, was that there was a base level of confusion between all participants in the market.

The Claimant objected to this on the basis that the argument was not pleaded (and was thus irrelevant) and that the material was introduced too late.

There was no time available to deal with a review of the material or rule on its admission. It was dealt with as follows. First, the parties made submissions as to data on whether there was a base level of confusion and I have considered them as an overall part of the case. I did not consider the Defendants' late bundle in its entirety, and I do not have to deal with the parties' submissions as to the effect of that. Secondly, the parties asked me to consider examples of alleged actual confusion and were able to select individual incidents from the late bundle.

Where I have reviewed individual documents in the bundle or data about them (rather than the actual text) those are admitted in evidence. The rest of the material is not admitted beyond that purpose.

I note that the Claimant says that in any event the late evidence does not benefit the Defendants and only shows that the Defendants have run their business in such a manner to invite administrative confusion upon themselves.

The witnesses

The Claimant called Dr Ashley Gray, the Managing Director and a founder of the Claimant. He is a veterinary surgeon. He gave evidence about the Claimant's business and their concern about the Petsure business.

The Defendants criticised Dr Gray for arguing the Claimant's case and giving opinions. The Defendants argued that parts of Dr Gray's second witness statement were inadmissible because they did not comply with the rules set out in PD57AC and were inadmissible commentary, speculation or opinions. They applied at the PTR to strike out those parts. There was no time at that hearing to deal with the application and it was carried over to the trial.

There was not time to deal with this application separately at the trial, and I therefore considered Dr Gray's evidence as the trial proceeded. I was referred to the judgment of Fancourt J in Greencastle MM LLP v Payne [2022] EWHC 438 (IPEC).

There is no need to strike out this evidence. Greencastle was a case of serious non-compliance with the Practice Direction. This case was not. Dr Gray's evidence could have been given without the contested matters, but that evidence was consistent with and did not have a significant impact upon his admissible evidence. It...