The law
20. The general of passing off law was not in dispute. I must apply the principles explained in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491. Of the three elements of the tort identified by Lord Oliver (at p.499), only the first matters here. The Defendants must establish that “cryptoback” was by the Filing Date recognised by the public as distinctive of the services of Global. A Neologism 21.In his skeleton argument Mr Hill characterised “cryptoback” as being a neologism and indeed this was established by the evidence. Neologisms are liable to raise an evidential point all their own. 22.It has long been recognised that there is a potential difficulty facing a claimant who seeks to rely on goodwill associated with a newly coined word which is used in relation to a particular product or service. Linoleum Manufacturing Company v Nairn [1878] 7 Ch. D. 834 concerned an action for infringement of the common law trade mark LINOLEUM. A Mr Walton had invented a type of floor-cloth (as it was described) and had called it “linoleum”. The plaintiff company was set up as a vehicle for the business of selling linoleum, to which were assigned Mr Walton’s patents for the product. The name “linoleum” was used exclusively by Mr Walton and the company for 15 years until the patents expired. The defendant then sought to sell what they proposed to call “Linoleum Floor-Cloth”. Fry J said (at 836-7): “ … the Plaintiffs have alleged, and Mr. Walton has sworn, that having invented a new substance, namely, the solidified or oxidised oil, he gave to it the name of ‘Linoleum’ and it does not appear that any other name has ever been given to this substance. It appears that the Defendants are now minded to make, as it is admitted they may make, that substance. I want to know what they are to call it. That is a question I have asked, but I have received no answer; and for this simple reason, that no answer could be given, except that they must invent a new name. I do not take that to be the law. I think that if ‘Linoleum’ means a substance which may be made by the Defendants, the Defendants may sell it by the name which that substance bears. But then it is said that although the substance bears this name, the name has always meant the manufacture of the Plaintiffs. In a certain sense that is true. Anybody who knew the substance, and knew that the Plaintiffs were the only makers of this substance, would, in using the word, know he was speaking of a substance made by the Plaintiffs. But, nevertheless, the word directly or primarily means solidified oil. It only secondarily means the manufacture of the Plaintiffs, and has that meaning only so long as the Plaintiffs are the sole manufacturers. In my opinion, it would be extremely difficult for a person who has been by right of some monopoly the sole manufacturer of a new article, and has given a new name to the new article, meaning that new article and nothing more, to claim that the name is to be attributed to his manufacture alone after his competitors are at liberty to make the same article.” 23.Related, but distinct, is the question whether the public regarded “cryptoback” as descriptive of a type of service. “Cryptoback” is a contraction of “cryptocurrency cashback” and is thereby potentially descriptive. The more descriptive a word is of the goods or services in respect of which it is used, the more use, established to be use as a badge of origin, is liable to be required in order for it become distinctive of a single entity’s goods or services (assuming that it is not so descriptive as to make that impossible in practice). I must take this into account as well when considering whether the Defendants have established that Global had acquired the goodwill it claims as of the Filing Date. 24.When the matters referred to in paragraphs 22 and 23 above were raised by me, Mr Hill objected on three grounds. First, the effect in law of cryptoback being a neologism was not pleaded by Wirex. Mr Hill submitted that had it been pleaded the Defendants would have called more witnesses to establish how users regarded the word “cryptoback”. 25.Secondly, Mr Hill submitted that the Linoleum case dates from a different era with different facts. The true position is that neologisms, because they are new, do not have an established meaning and so are inherently nondescriptive. They can only become descriptive if that is how the public is taught to understand them. 26.Thirdly, it was submitted that it does not matter whether a mark is potentially descriptive or if it has some descriptive connotations. What matters is whether it is in fact taken as descriptive. 27.I think the answer to all these points is that at root there was only one principal issue in relation to the Defendants’ case under section 5(4) of the 1994 Act: whether cyrptoback was distinctive of Global’s services at the Filing Date. The parties had the opportunity to file evidence on that issue and did so. The point was fully argued at trial. The background evidence made it plain that cryptoback was a neologism – Mr Hill drew attention to that fact in his skeleton argument – and it was self-evident that the word is a contraction of “cryptocurrency cashback”. Those facts were relevant to the principal issue and the parties were free to address them directly if they so wished. They are in any event facts which must be taken into account by the court when considering the principal issue. Ultimately, however, whether cryptoback was distinctive of Global’s services at the Filing Date turns on the evidence directed to that issue. I deal with that evidence below. 28.The Linoleum case, like all other authorities, not least those concerning passing off, turned on its own facts. But it provides an illustration of an obvious possibility: a neologism, especially where used in relation to a new product or service, may be taken by the public to be a new word for that type of product or service. 29.Finally, I do not accept that because a word is new it must be inherently nondescriptive. The nature of the word and the goods and/or services in relation to which it is used will govern where it lies on the spectrum of descriptiveness.