The Supreme Court (by a 4:1 majority) has dismissed an appeal taken by Joseph Brennan Bakeries against a High Court decision that Brennan had passed off its wholewheat bread as being the product of McCambridge (View an article on the High Court decision here.) The High Court granted an injunction in November 2011 restraining Brennan from selling its wholewheat bread in packaging that was confusingly similar to that of McCambridge. However, a stay was put on the injunction pending the appeal. 

The Appeal
Brennan did not deny that its packaging resembled that of McCambridge’s. However, it sought to argue 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 sought to rely on the fact that its name was displayed on the top part of the packaging in red and yellow, the traditional company colours, and that any customer who picked up the bread could not fail to see this. 

Majority Decision
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”.

The test applied was that of the “reasonably prudent shopper”, i.e. whether such a purchaser was reasonably likely because of the similarity in the get up of the Brennan product to that of McCambridge to exit the shop with the Brennan loaf. Brennan argued that the High Court judge had incorrectly applied this test by including those purchasers who simply pick up a packet of wholewheat bread and assume, without looking at it, that it is McCambridge’s bread. However, the Court stated that this argument missed a critical part of the High Court judge’s rationale: even the ordinary reasonable prudent consumer does not carry out a detailed examination of a packet of bread when he takes it from the supermarket shelf.

Dissenting Judgment
Judge Fennelly disagreed with the majority. In his view, the High Court judge set the bar too low by finding that there had been a passing off merely on evidence that consumers had been confused. Fennelly J noted that the High Court judge impliedly found that a consumer who looked at the label on the Brennan’s bread would not be confused into thinking he was buying McCambridge’s bread. The High Court judge decided the case by reference to the consumer who might not read or notice the front panel. However, Fennelly J queried how the panel, which was the focus of McCambridge’s complaint, could cause such a consumer to believe anything about the product? Any confusion caused to such a consumer must have stemmed from the fact that the products were the same general size and shape. Yet, as Fennelly J, pointed out no trader enjoys a monopoly in the use of any particular shape or size of a product.

Fennelly J expressed the view that the analysis of the High Court judge “would permit a finding of passing off to be made merely on a sufficient showing of confusion without the essential element of imitation of the specific quasi-proprietary interest of the plaintiff in the get-up of his own goods.”

Following delivery of the judgment, it was reported that Brennan was given 48 hours to change the packaging of its wholewheat bread product.

The judgment is of particular interest as it is the first dealing with passing off which the Supreme Court has given for many years and gives guidance as to the latest evolution of the law on the topic.

Click the attached pdf to view photographs of the competing products (which were attached to the Supreme Court judgment)

Contributed by Mary Drennan & Sinéad Kelly.