Supreme Court allows passing off appeal, ruling trial judge erred by focusing on mere confusion instead of deceptive imitation.

THE SUPREME COURT

[S.C. No. 466 of 2011]

Denham C.J.

Hardiman J.

Fennelly J.

Clarke J.

MacMenamin J.

Between

McCAMBRIDGE LIMITED

PLAINTIFF/RESPONDENT

and

JOSEPH BRENNAN BAKERIES

DEFENDANT/APPELLANT

Judgment delivered the 31st day of July, 2012 by Mr Justice Fennelly.

1. I have the misfortune to disagree with the majority. I differ with the comprehensive and meticulous judgment which is about to be

delivered by MacMenamin J essentially in its conclusion on what he says at the outset is the essential question before this Court on

the appeal, namely whether the learned trial judge erred in applying agreed principles to the facts of the case. I gratefully adopt the

history of the facts of the case and of the proceedings to date and I can be brief.

3. MacMenamin J refers to the restatement of the three-stage test for establishing the tort of passing off set out in the speech of

Lord Oliver in Reckitt & Coleman Products Ltd v Borden Inc. [1990] 1 W.L.R. 491 at page 499. The second of the criteria is the most

directly relevant for the purposes of the present appeal. That criterion is that the plaintiff “must demonstrate a misrepresentation by

the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered

by him are the goods or services of the plaintiff.” It is not enough for the plaintiff to show that there is a risk of confusion between

the products of the defendant and his products. It is necessary that the defendant be shown to have imitated the “get-up” of the

plaintiff’s product to such an extent that he is deceiving consumers into buying it as if it were that of the plaintiff. That is because,

under the first leg of the test, the plaintiff has to show that “the get up [of his goods] is recognised by the public as distinctive

specifically of the plaintiff's goods or services.”

4. It is essential also to identify the test to be applied by the court in determining that the defendant, by the “get-up” of his product,

has deceived or is likely to deceive consumers into believing that the product he is selling is that of the plaintiff. Peart J expressed

the matter as follows:

“In conducting the present exercise the Court must put itself in the shoes of the reasonably prudent shopper, who is not

in any particular hurry and who neither is overly scrupulous and dilatory, and who enters the shop with the wish to

purchase a loaf of McCambridge wholewheat bread. Is such a purchaser reasonably likely, because of the similarity in the

get-up of the Brennans product to the McCambridge product, to exit the shop with the Brennans loaf, having intended to

purchase the McCambridge loaf?”

5. I agree with MacMenamin J that this is the correct formulation of the test and that it involves, as he points out at paragraph 36 of

his judgment, excluding from consideration the “utterly careless purchaser.”

6. I bear in mind that the complaint of the respondent in this case is that it alleges that the appellant made certain changes in the

packaging of its wholemeal bread so as to make it confusingly similar to that of the respondent.

7. The learned trial judge described the respondent’s packaging as follows:

“In 2008, McCambridge had changed its packaging so that thenceforth it was sold in a plastic re-sealable bag with

distinctive graphic elements thereon such as a sheaf of wheat and the McCambridge name, as well as distinctive

colouring, the most significant being a dark green panel, appearing on the front of the bag.

8. As MacMenamin J describes it, there is embossed on the package “a centrally positioned printed block, predominantly green in

colour, but containing overhanging text in fancy script, comprising the words “John McCambridge.”

9. The distinctive elements of the respondent’s packaging are, therefore, on the front of the pack. The respondent’s complaints about

the appellant’s packaging are summarised in written submissions as follows:

(a) The size, shape and overall layout of the packaging;

(b) The colouring (and in particular the predominant use of a shade of green which is virtually identical to that used in the

McCambridge Packaging);

(c) White on green writing;

(d) The use of an off-yellow colour panel;

(e) Deployment of a stylised signature in a similar font;

(f) Script overhanging against the main green panel;

(g) The overall colour schemes which are confusingly similar;

(h) The depiction of a head of wheat on the JBB Packaging which is reminiscent of the sepia photograph of ingredients

appearing on the McCambridge Packaging; and

(i) The shadow effect behind the signature of both “Joe Brennan” and the word “Wholewheat” on the JBB Packaging.

10. The court assesses similarity of “get-up” by reference to the combined effect of the elements. All the elements need to be

considered. The first thing to note about the list of elements of comparison proposed by the respondent is that it omits the fact that

there appears on the front of the appellant’s package the quite distinctive yellow colour with red lettering representing the logo of the

appellant. This is the traditional distinguishing feature which appears on all the appellant’s products. As I think is implied by the

judgment of the learned trial judge, a consumer who looked at this labelling at all would not be confused into thinking he was buying

the respondent’s loaf.

11. I will also comment briefly on the other items in the list. I do not think there can be any complaint about the overall shape and

size of the package. It is generic. The shade of green is central to the complaint and is said to be confusingly similar to that of the

respondent. Accepting that, it cannot be viewed in isolation and indeed cannot be seen without simultaneously seeing the distinctive

appellant’s logo. The white on green writing was on the appellant’s former packaging and seems in no way distinctive. I can see no

confusingly similar “off-yellow colour panel.” The stylised signature in a similar font refers to the respondent’s label. The similar font

appears on the appellant’s package in the word, “Wholewheat.” These different words certainly appear in overhanging form. It is not

possible to consider that overall colour scheme, without taking into account the appellant’s logo which is quite dissimilar. The head of

wheat referred to appears in a photograph in the respondent’s package but as independent decorative design on that of the

appellant. The shadow effect behind the signature of “Joe Brennan” and “Wholewheat” are features of that type of script.

12 Clearly the points made by the respondent are legitimate elements in carrying out the exercise of comparison. However, it is the

overall effect that matters in the end. That effect has to be considered in the context of the sale of the competing products. The

plaintiff is not entitled to select some only of the constituent elements in the packaging and ignore others. This point is illustrated by

the decision of the House of Lords in Schweppes v Gibbens (1905) 22 RPC 601. In that case, Lord Lindley said:

“It appears to me that the real answer to the appellants’ case is this – that they invite your Lordships to look, not at the whole get-

up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the

appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look

at the whole get-up, and not only at the part of it which the resemblances are to be found, the whole get-up does not deceive.”

13. The learned trial judge expressed his central findings in a small number of key paragraphs, 28, 29 and 30 of his judgment. I agree

with MacMenamin J that these passages should be fully quoted. The learned judge made the following findings:

“28. In the present case I am satisfied that the competing loaves of bread are presented to the public in shops and

supermarkets for the most part on open shelves of varying designs at or near eye level. Some of those shelves are flat,

but some are sloped upwards at angles of varying degrees. On occasion these loaves are presented upright on a shelf.

But there has been evidence also to the effect 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. Therefore any distinguishing features

appearing on the front panel, though visible when the product is in an upright position, may not be so easily seen later in

the day when they may be disturbed from that upright position, and be lying flat.

“29. The result is that even a reasonably careful and observant customer may not read or notice in particular the front

panel of the package until it is in his or her hand, because only the end or side of the package is visible on the shelf. For

the average shopper, therefore, the competing brand name and indeed the distinctive red and yellow brand colours on the

Brennans product or other distinguishing features may not be readily and clearly visible when the product is on the shelf.

Each product looks almost identical from that angle and vantage point, being of the same general shape and size.”

14. It seems to me that this analysis of the circumstances of the sale could not lead to a conclusion that the appellant’s label is the

cause of confusion in the consumer’s mind, for the simple reason that the consumer under consideration is assumed not even to have

seen the front panel of the package, though that panel itself is the focus of the complaint. In the sales situation envisaged, “each

product looks almost identical.” But the reason he gives for that is that the products are “of the same general shape and size,” not

that the packaging on the appellant’s loaf is misleadingly similar to that of the respondent. Significantly, the learned trial judge went

on to consider the position once the labelling could be seen as follows:

“30. There is little doubt, however, that if the same customer was to look at and examine the product when in the hand,

or indeed again when it is in the shopping basket or trolley, or indeed later again at the check out area, the brand name

and distinctive brand colouring of the Brennans product would be observed, and any such customer who wanted the

McCambridge product would be able to return the Brennans product to the shelf and replace it with the McCambridge loaf

if it was available on the shelf. However, I have heard evidence from a small number of customers called by the

defendant, some of whom have stated that it was not until they got home that they noticed that they had purchased the

Brennans product rather than the McCambridge loaf which they had intended to purchase. I do not doubt the sincerity of

the evidence which those witnesses have given.”

15. The learned judge proceeded further to elucidate his reasoning in the following paragraph:

“31. As I have said, bread, including these loaves, is purchased regularly by customers, and it is not something to which

typically much time will be devoted. Bread will be picked off the shelf quite quickly and placed in the basket or trolley

without too much, if any, careful scrutiny. That is not the behaviour of a careless or indifferent shopper. It is in my view

the normal and reasonable behaviour of the average shopper. This is something which must be borne in mind when

considering the likelihood of confusion between the packaging of the Brennans product and that of McCambridge. For this

reason, the Court must have regard to the first impression of the product on the customer when it is on the shelf, and to

attach less importance to the later opportunities which the customer may have to notice that the wrong product has

been placed in the basket or trolley before leaving the shop.

16. The judge is undoubtedly correct to concentrate on the customer in the often rushed and confusing circumstances of the

supermarket, typically a person who takes the product off the shelf “quite quickly and place[s it] in the basket or trolley without too

much, if any, careful scrutiny.” When one adds that the learned judge has already assumed that this person “may not read or notice

in particular the front panel of the package until it is in his or her hand…,” it is impossible to see how that panel has caused him to

believe anything about the product.

17. Yet again, the learned judge explained how he had come to his conclusion at paragraph 34:

“I am concerned with the overall appearance on a first impression, and in particular that appearance as it is viewed by

the average and reasonably observant customer when viewed from his or her vantage point on the shop shelf, and in the

circumstances in which the product is purchased as outlined already.”

18. In my view, the learned trial judge considered the case as one of mere confusion. This becomes clear from a passage at

paragraph 36, where he said that it “would take more care and attention than I believe it is reasonable to attribute to the average

shopper for him or her not to avoid confusion between the two packages when observed on the shelf, especially when these are

placed adjacently or even proximately so.” He did not describe how the act of alleged passing off by the appellant causes the

confusion which he identifies.

19. In my view, this sets the bar too low. It departs from the essence of the analysis. Firstly, no trader, other than by use of a

registered trade mark, has a monopoly in the use of any particular shape or size of product or in any particular label, colour or word or

combination of words. He may achieve that result perhaps indirectly by showing that any such element has become distinctive in

connection with his products. The essence of the tort of passing off is that no trader is to be allowed to sell his goods to the public in

such a way as to deceive consumers into believing that they are those of his competitor. It is important to remember that, in an

environment of free competition, traders are allowed, even encouraged, to vie with each other for the custom of consumers. It is only

where one trader is shown to have so behaved as to lead those consumers to believe that the goods he is selling are those of the

competitor that the tort of passing-off is committed. In my view, the analysis deployed by the learned trial 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. I would approve the statement of Lord Scarman in Cadbury

Schweppes v Pub Squash [1981] 1 W.L.R. 193 at 200, which was approved by O’Higgins C.J. delivering the judgment for the majority

of this Court in Adidas v O’Neill [1983] I.L.R.M. 112 at 121:

“And the test is whether the product has derived from the advertising a distinctive character which the market

recognises. But competition must remain free: and competition is safeguarded by the necessity for a plaintiff to prove

that he has built up an "intangible property right" in the advertised descriptions of his product: or, in other words, that he

has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant,

however, does no wrong by entering a market created by another and there competing with its creator. The line may be

difficult to draw: but unless it is drawn, competition will be stifled.”

20. For these reasons, I would have allowed the appeal and dismissed the respondent’s claim.