Baker's appeal goes a-rye

The IPKat had previously mentioned a passing-off case in the Irish courts between rival bakeries. It received some minor references from the IPKat in a number of Monday Miscellanies and Wednesday Whimsies, but never the full limelight of a dedicated post. However the original High Court decision has now been adjudicated on appeal in the Supreme Court, so its time has come. The case is McCambridge Limited v Joseph Brennan Bakeries [2012] IESC 46, for which there is a majority decision (here) and a dissenting judgment (here).

The case raises interesting questions about the interplay between get-up and purchasing decisions, especially where some shoppers may not have seen the allegedly similar elements of get-up. And what if the only evidence of confusion arises from shoppers who clearly failed to see the most prominent branding elements distinguishing the respective products?

McCambridge's - the plaintiff in the passing-off action

The High Court decision of Mr Justice Peart outlined the facts and confirmed something the IPKat has long known: humans are messy creatures, alas. Supermarket proprietors arrange their produce neatly in ordered ranks on shelves. Then shoppers pick goods up, leave them down again in the wrong spot, and generally rummage through the merchandise. What may have been a neatly stacked shelf of goods at 8 a.m. may become a disordered mess of jumbled products by mid-afternoon. 

In those circumstances, products which are only branded on the front surface, like the package of McCambridge's bread shown above, can end up with their labels not visible.  Now, along comes a competitor's product having the same generic packaging type (square-ish sliced loaf in a clear plastic tray, inside a clear plastic bag branded on the front). That product is Brennan's wholewheat bread, shown below.

Brennan's - the defendant

Both products are sold on the same shelves, sometimes alongside one another, and may get jumbled together. Evidence showed that a small number of shoppers who were intending to buy McCambridge's bread had, from time to time, picked up the Brennan's product and have even exited the shop having paid for it. Such evidence of shoppers leaving the store with the wrong product is normally a classic indicator for passing-off.

The trial judge held on the evidence that there had been confusion, notwithstanding the prominence of the red-and-yellow Brennan's logo. (Incidentally, Brennan's is probably the best known brand of bread sold in Ireland generally, so the brand is extremely recognisable.) Peart J. said 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 checkout 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 and replace it with the McCambridge loaf if it was available on the shelf …”  

Nevertheless, he held that in the circumstances of how products were bought in supermarkets, even a "reasonably careful and observant customer may not read or notice in particular the front panel of the package" until it was in the hand.

"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."

The Supreme Court had to decide if the judge had erred on a point of law. The majority, in a judgment written by MacMenamin J., found that the trial judge was entitled to reach the conclusions he did on the evidence before him, and that he had correctly applied the proper test, which was essentially the three point test expressed by the House of Lords in Reckitt and Colman Products Limited v. Borden Inc., which had previously been confirmed by the Irish Supreme Court. The appeal was therefore dismissed.

The "Jif" lemon from Reckitt and Coleman v Borden

Brennan’s had argued that the similarities were generic – the shape and type of packaging, the use of descriptors such as “wholewheat”, and the use of the colour green – and that McCambridge’s could not enjoy any goodwill in them. But MacMenamin J. held that the protectable get-up arose out of the combination of these generic features with other, less generic ones, such as white-on-green writing; the use of an off-yellow colour panel; the utilisation of a stylised signature and similar font; the use of overhanging script against the main green panel; the particular combination of colour schemes; the depiction of the head of wheat; and the shadow effect behind the signature.

On its surface, this all may appear pretty uncontroversial – the get-up is the sum of the individual elements and if enough of a well-known get-up is taken, then passing-off may result, right? But wait: the trial judge said that if anyone actually looked at the label (where all the non-generic elements of get-up were found) then they would immediately have been disabused of any confusion.

The dissenting judgment of Mr Justice Fennelly argues this point and, in this Kat's opinion, has a good deal of force. (This Kat has no axe to grind in the dispute, being a confirmed fan of both McCambridge's brown bread and Brennan's classic white sliced pan.)

In Fennelly J.'s view, there had been confusion without passing-off. He noted the salient findings made by the trial judge based on the evidence before him which had showed:

• confusion might occur in particular circumstances, such as when the loaves were in disarray and the packaging was not clearly visible; 

• it was only in those circumstances, when the labels were not visible, that there was any likelihood of confusion; and 

• once the products were in hand and examined, confusion would no longer be possible, in the estimation of the trial judge.

In these circumstances Fennelly J. found that the appellant’s label was not the cause of confusion in the consumer’s mind, for the simple reason that the consumer under consideration was assumed not even to have seen the front panel of the package. In the sales situation envisaged, where loaves are not neatly arrayed with their labels visible, the trial judge had said “each product looks almost identical.” But Fennelly J. noted that the reason the trial judge gave for that apparent identity in appearance was that the products were “of the same general shape and size,” not that the packaging on Brennan’s loaf was misleadingly similar to McCambridge’s.

He concluded that the trial judge had erred in law by considering the case as one of mere confusion without requiring there to have been a similarity in get-up which caused that confusion.

From this angle, the generic can top
looks very much like the market leader...

In essence, Fennelly J.'s argument is that it may be true, but was immaterial to the case in hand, that the get-up of a product might be made up of both generic elements like the packaging type, shape and size, and protectable elements like colour schemes, signatures, and so on. What mattered was which of the elements of the get-up might have caused customers to pick up the wrong loaf. And in this case, it could only have been the unprotectable packaging type, shape and size, and not any of the other similar features which the confused shoppers were explicitly assumed not to have seen.

This Kat (in full knowledge that some of his more learned and expert colleagues will disagree) thinks Mr Justice Fennelly probably got it right. If shoppers who see a clearly branded label will immediately know it is not the product they intended to buy, then one cannot rely on elements of that label to support passing-off on the basis of customers not seeing the label and being confused nonetheless. The fact that a case could be made that overall get-up was similar is a red herring. Customers who were confused were not misled by that similar get-up: they did not even see it; if they did see it, they were not confused.

The second element in the passing-off test is that the public has been misled (or is likely to be misled) into believing the defendant's product to be that of the plaintiff as a result of a misrepresentation by the defendant made in the course of trade.  In this case, on the findings of the trial judge, members of the public were victims of their own assumptions as to the identity of a product for which they only saw the plain, unbranded, generic package shape. The defendants did not cause this confusion by any misrepresentation on their part. Brennan's undoubtedly adopted some similar  label elements and colour schemes, but this did not lead to a misrepresentation which fooled the public.

Another perhaps more practical way to view the situation is this: if a company knows that its market-leading products are liable to sometimes appear on the supermarket shelves jumbled up and reversed, and with only an unbranded rear or end surface of a generic package type visible, then it can easily remedy this and protect against passing-off by branding those surfaces and making them non-generic.

Thanks are due to the various readers who mailed the IPKat about this decision, with special mention to barrister Gemma O'Farrell.