The Supreme Court (by a 4:1 majority) has dismissed an appeal taken by Joseph Brennan Bakeries against a High Court finding that it had passed off its whole-wheat bread as being the product of McCambridge. The High Court granted an injunction in November 2011 restraining Brennan from selling its whole-wheat bread in packaging that was confusingly similar to that of McCambridge. However, the injunction was deferred pending the Supreme Court appeal.
Brennan did not deny that its packaging resembled that of McCambridge’s. However, it argued that the resemblances between the two packets (e.g. the size and shape of the packaging, the use of the colour green) were common to the trade or “generic” and that McCambridge could not enjoy any goodwill in them. Brennan also relied on the fact that its name was displayed on the top of its packaging in red and yellow, the traditional company colours, and that any customer who picked up the bread would see this.
The majority of the Supreme Court agreed that similarities are not of themselves sufficient to constitute a passing off. However, it found that the packaging had to be viewed in its entirety and that the so-called generic features could not be discounted from the total equation. The Court noted that the Brennan’s packaging combined generic features with certain “less generic” features used by McCambridge (e.g. white on green writing, the use of a stylised signature) and concluded that its packaging went “beyond the realm of mere resemblance into imitation”.
Following delivery of the judgment, it was reported that Brennan was given 48 hours to change the packaging of its whole-wheat bread.
The judgment is of particular interest as it is the first Supreme Court judgment dealing with passing off in a number of years and gives guidance as to the latest evolution of the law on the topic.
View a more detailed article on the case here.
View photographs of the competing products (which were attached to the Supreme Court judgment) here.
Contributed by Mary Drennan & Sinéad Kelly.
