The case concerned two very well known Irish bread producers. The Plaintiff, McCambridge, has been dominant in the Irish whole-wheat brown bread market for the last 50 years or so. Brennans Bread, the Defendant, is one of the largest and well known manufacturers of bread in Ireland being in operation for many years but only more recently entering the wholewheat brown bread market. Having traded for so long, Brennans Bread has become synonymous with red lettering on a yellow background on its packaging. Earlier this year, Brennans Bread introduced new packaging for its wholewheat bread brown product, which the Plaintiff's contended resembled its own packaging to the extent that customers would buy the Brennan Bread's product in error.
The McCambridge packaging has been in use since 2008 and comprised a clear plastic re-sealable bag "with distinctive graphic elements thereon such as a sheaf of wheat and the McCambridge name in italics, as well as distinctive colouring, the most significant being a dark green panel, appearing on the front of the bag". Mr Justice Peart was satisfied that McCambridge, as a result of its dominant position, had acquired a public association with the packaging used by it. However, McCambridge was not held to have any proprietary rights as such over the type of re-sealable bag, its shape or the shape/size of the loaf of bread.
A comparison of the two products at issue in the case is set out in the photograph below:
Mr Justice Peart heard evidence on how Brennans Bread came to procure its packaging and was satisfied that there was no intention on the part of Brennans Bread to deceive the public. Brennans Bread relied upon the prominent use of the yellow and red colouring on its packaging which was readily identifiable by the public as associated with Brennan Bread's products.
McCambridge on the other hand argued that the overall appearance or "get-up", particularly when placed beside or near the McCambridge product on a shop shelf, is so similar in overall appearance that errors would be made by consumers in purchasing. McCambridge put forward evidence from consumers at the trial of the action on actual confusion. McCambridge also referred to an email from the design company to Brennans Bread where the comment is made regarding a suggested alteration that it brought the packaging "closer to McCambridges".
However, Mr Justice Peart was satisfied that there was no deliberate effort by Brennans Bread to deceive or confuse the purchasing public but at the same time noted that intention is not necessary to commit the tort of passing-off. The Judge carefully considered the UK House of Lords authority in Reckitt & Coleman Products Ltd v Borden Inc., otherwise known as the "Jif Lemon Case", and more recently the decision of Mr Justice Clarke in Jacobs Fruitfield Food Group Ltd v United Biscuits (UK) Ltd. The test applied by Mr Justice Peart was whether a reasonably prudent shopper, who is not in a particular hurry, who neither is overly scrupulous and dilatory, and who enters the shop with the wish to purchase a loaf of McCambridge wholewheat bread is likely, because of the similarity in get-up, to purchase the Brennans Bread product in error.
In making this comparison, the first overall impression is crucial and there should be no over reliance on particular differences which can be identified on closer examination. Of particular interest, was Mr Justice Peart's observations that the use of a competing brand name and distinctive colour scheme on the Brennans Bread product was not enough to dispel the likelihood of confusion as such features may not be readily and clearly visible when the product is on the shop shelf. This relied upon the assumption that "throughout the day loaves may get tossed around on the shelf, even though when first placed there they were placed in an orderly and tidy way".
Mr Justice Peart concluded that passing-off had occurred because it would take more care and attention than was considered reasonable to attribute to the average shopper to avoid confusion. As a result, the Court granted an injunction restraining further use of the packaging by Brennans Bread.
The case is currently under appeal to the Supreme Court. Brennans Bread subsequently secured a stay on the injunction granted by Mr Justice Peart pending the outcome of the appeal.
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