English law has always been careful to prevent anyone monopolising the use of the common English language. In passing-off cases where the Claimant's goodwill substantially attaches to a word, mark or other symbol that is essentially descriptive of some quality of the goods or services which he provides, the courts have often been reluctant to grant relief. One way a Defendant may avoid liability in such a case is by relatively minor differentiation between his trade name and the Claimant's. This may succeed even where there is a risk of confusion between the Claimant and Defendant business (see Office Cleaning Services Limited v. Westminster Window and General Cleaners Limited ).
What is and what is not descriptive was reconsidered by Neuberger J. in the High Court case Smith & Others v. Beds Direct Nationwide on 14th December. This case involved the use by two companies in South Wales of the name ìBeds Directî for the supply of beds ìpromptly and directly to the publicî. The words appeared on signs and advertising with different fonts and, infrequently, with different associated wording and devices.
Neuberger J. held that passing off was made out. In doing so he stated that there was ìsomething of a spectrumî for descriptive names. By way of examples, on one extreme of the spectrum he cited the name ìsoapî for selling soap, whereas at the other extreme he suggested the 'wholly fancy' name ìflashî. He concluded that ìBeds Directî was closer to the ìsoap endî of his spectrum than the ìflash endî. However, it was not so close as, and was distinguishable from, ìOffice Cleaning Servicesî (the name which had been in dispute in the Office Cleaning Services case). ìOffice Cleaning Servicesî was a complete description which could be used in normal speech by a member of the public to identify precisely the services which were being supplied. ìBeds Directî was not. ìOffice Cleaning Servicesî would mean effectively the same thing to any person, whereas ìBeds Directî could mean a number of different things.
Neuberger J. accepted that the ìBeds Directî name involved a degree of description and that this meant that a court ìshould not be too readily persuaded that a trader has built up sufficient reputation and goodwillî in the name for the purpose...