Oven Clean Ltd v Gilbert

At an interim stage, passing off by a descriptive business name depends on the defendant’s whole get-up. Small differences may avoid confusion, particularly where the claimant has built its goodwill around a distinctive logo rather than the words alone. Relief must minimise the risk of injustice, weighing the strength of each party’s case within the balance of convenience. Mandatory relief requires the heightened approach identified in Zockoll Group v Mercury Communications. A court should not require discontinuance of established telephone numbers where that would seriously damage a legitimate business and the claimant’s case is weak or delayed.

The claimant operated a national oven-cleaning franchise business under the registered logo and trading style Ovenclean. The defendant, a former franchisee, continued an oven-cleaning business after termination. The claimant alleged trade mark infringement and passing off arising from old leaflets, a Yellow Pages advertisement, two telephone numbers and the domain name ovenclean.info.

By the hearing, the old leaflets had been destroyed, the advertisement withdrawn and the domain name offered for assignment. The claimant nevertheless sought interim injunctions, including discontinuance of both telephone numbers. The central issues were the continuing risk of infringement, the proper scope of any passing-off restraint, and whether the telephone numbers should be discontinued.

1. The application was determined under the interim principles in American Cyanamid. The parties’ losses were difficult to quantify, and each could satisfy a cross-undertaking in damages. The court therefore had to fashion relief which minimised the risk of injustice, taking the relative strength of the parties’ cases into account.

2. The name Ovenclean was descriptive. The court applied Office Cleaning Services Limited v Westminster Window and General Cleaner Limited [1946] 63 RPC 39: the claimant assumed the risk of confusion by using descriptive words, and small differences in a rival’s name could avoid passing off. Passing off also depended on the defendant’s whole get-up. The separate words “Oven Clean” and the defendant’s website were likely to distinguish his business from the claimant’s.

3. The court considered interim intellectual-property relief and freedom of expression. Following Cream Holdings v Banerjee [2005] 1 AC 253 and Boehringer Ingelheim v Vetplus Limited [2007] EWCA Civ 583, the enhanced probability approach was not clearly applicable beyond comparative advertising. Mere use of a business or product name did not itself engage Article 10, although describing services to potential customers might do so.

4. For mandatory relief, the court applied the special approach in Zockoll Group v Mercury Communications [1998] FSR 254, adopting the least-risk-of-injustice analysis stated in Nottingham Building Society v Eurodynamic Systems [1993] FSR 468. A high degree of assurance that the claimant would establish its right was relevant, but not indispensable where refusal carried the greater risk of injustice.

5. The court accepted an undertaking restraining distribution of the old leaflets. It also accepted a limited undertaking restraining use of Ovenclean and the registered trade mark as a trade mark or trading name. It refused the wider passing-off restraint and any order assisting others, because repetition was very unlikely and the wider wording risked uncertainty and contempt issues.

6. The court refused to order discontinuance of either telephone number. There had been substantial delay concerning the 0800 number, and discontinuance could destroy a legitimate business. The claimant had never demanded return of the 01494 number in 2006, giving rise to an arguable waiver, while the passing-off claim concerning the Yellow Pages advertisement was weak. No relief was granted under paragraph 2 of the proposed order.