The three-judge Court of Appeal, overturning the High Court’s 2016 decision, ruled that the Appellant was entitled to a permanent injunction restraining the Respondents from passing off their goods (eggs) and trading under the name “O’Briens of Galway Free Range Eggs”.
The judgment, which will be welcomed by brand-owners, clarifies particular aspects of the traditional Passing Off test, provides insight into the Courts’ view of survey evidence and the interaction between the Tort of Passing Off and labelling requirements mandated under EU Regulations (available at Galway Free Range Eggs Limited v. O’Brien & Ors. IECA 8).
First Leg of the ‘Triple Test’ for Passing Off
The Court of Appeal found that the trial judge had failed to properly apply the first leg of the ‘triple test’ for Passing Off established in Jacob Fruitfield Limited v United Biscuits UK Limited, in not determining whether the Appellant had established the existence of a reputation or goodwill in its product, particularly in its brand name. Additionally, it found that there was ample uncontradicted evidence establishing the Appellant had a significant reputation/goodwill in the brand name “Galway Free Range Eggs”.
Misconstruction of the Appellant’s Case
The High Court approached the case primarily by reference to the overall get-up of the packaging of the Appellant’s/Respondents egg boxes and in so doing found that there was no likelihood of confusion “between the egg boxes of the parties”. However, the Appellant’s case was focused on their brand name “Galway Free Range Eggs”. The Court of Appeal held that the High Court had misjudged the case and that the correct test to be applied when considering whether a claimant’s reputation or goodwill in a brand name is infringed is “Is there a real likelihood that the public would get an impression of a connection between the business of the appellant and the business of the respondents?”.
Second and Third limbs of the ‘Triple Test’ for Passing Off
The Court of Appeal also found that the trial judge had failed to properly apply the second and third limbs of the ‘triple test’ i.e. (b) “misrepresentation leading to confusion between what is alleged to be the offending product and the claimants’ product” and (c) “whether damage to the claimants’ goodwill or reputation by virtue of any such confusion has been established.”
Clarifying the second limb of the test, the Court held there was no requirement that the Appellant establish that the actions of the Respondent had caused confusion, rather the test is whether the use of the brand name by the Respondents “is likely to confuse people into perceiving a link or association” with the Appellant. Regarding the third element of the test, the Court usefully confirmed that it is not necessary for a Plaintiff to show that it has suffered actual damage in order to succeed.
The High Court, relying on the case of Smithkline Beecham plc. v. Antigen Pharmaceuticals Limited, rejected the Appellant’s survey evidence. The Court of Appeal found that the High Court’s scepticism as to the value of survey evidence was misplaced. Focusing on two Supreme Court decisions, the Court reiterated that survey evidence is admissible to prove public opinions on goodwill or likelihood of confusion.
The Court noted that the High Court had recognised correctly that the European Communities (Marketing for Eggs) Regulations 2009 requires egg boxes to be labelled “free range eggs”, “barn eggs”, or “eggs from caged eggs”. However, it had failed to recognise the limitation of the legal requirement to mark packaging in accordance with the Regulations, in that it did not require that such labels be included in the product or brand name.
The Court of Appeal’s judgment, although not ground-breaking, is noteworthy. It has refined the traditional triple test for passing off and reinstates the reliability of survey evidence in such cases. Additionally, and rather helpfully from a brand owner’s perspective, it makes clear that Passing Off can occur based on one characteristic. In this case the brand name had such significant goodwill/reputation that despite the dissimilar get up of the Respondents’ product, the confusingly similar brand name was enough to cause confusion in the general public. Finally, given the Court’s conclusions on Passing Off it considered it unnecessary to consider the Appellant’s trade mark infringement claim.
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