Galway Free Range Eggs Ltd v O'Brien

• Jurisdiction: Ireland
• Judge: Mr. Justice Tony O'Connor
• Judgment Date: 12 May 2016
• Neutral Citation: [2016] IEHC 249
• Docket Number: [RECORD No. 2013/5708P]
• Court: High Court
• Date: 12 May 2016

[2016] IEHC 249

THE HIGH COURT

O'Connor Tony J.

[RECORD No. 2013/5708P]

BETWEEN

GALWAY FREE RANGE EGGS LIMITED

PLAINTIFF

AND

KEVIN O'BRIEN, CARMEL O'BRIEN

AND

HILLSBROOK EGGS LIMITED

DEFENDANTS

Intellectual Property – Infringement of trademark – Permanent injunction – European Communities (Marketing Standards for Eggs) Regulations 2009 – The Trademarks Act, 1996 – Passing off – Damage to goodwill – Whether survey evidence was sufficient to requesting interlocutory injunction

Facts: The plaintiffs sought a permanent injunction against the defendants for restraining them from using the plaintiff's trademark and passing off. The plaintiff claimed that the use of the word, 'Galway' in the get up of the boxes used by the defendant for sale of free range eggs had caused confusion among the general public.

Mr. Justice Tony O'Connor denied the desired relief to the plaintiff. The Court held that the limited survey evidence adduced before the Court gave an impression that there existed no confusion in the general public as to the originator of the goods in question. The Court held that in the absence of clear evidence from the concerned persons such as the independent retailer or shopper, it was not appropriate to grant the injunction sought as there was no suggestion that the plaintiff had suffered any reputational damage by use of the word 'Galway' by the defendants. The Court held that under s. 15 of the Trademarks Act, 1996, use of a person's name or geographical indicators would not constitute an infringement of a trademark unless it was done with dishonest intent.

JUDGMENT of Mr. Justice Tony O'Connor delivered on the 12th day of May, 2016

The principal issues

1 The plaintiff limits its claim now to permanent injunctive relief to prohibit the defendants from continuing both an alleged passing off and an alleged breach of the plaintiff's trademark since the end of 2012. The word 'Galway' in the 'get up' of the boxes and promotion used by the defendants is the mischief in the case. The use of survey evidence and the weight to be attached to opinion evidence based on surveys are issues which arise also.

The comparisons

2 The idiom: 'a picture is worth a thousand words' springs to mind. Thanks to scanning, the Court can be more vivid (albeit in 2-D) than its description later of the relevant egg boxes and some impugned promotions by including the following in the annex to this judgment:-

(i) The top and side of the egg box used by the plaintiff company for the sale of its free range eggs ('the sunburst box'). Mr. Kevin Towey, ('Mr. Towey') a director of the plaintiff company who gave evidence clarified that this is the box used since the plaintiff freshened up its egg boxes in 2012;

(ii) the egg box label used for the sale of the defendants' free range eggs since in or about late November, 2012 ('the defendants' box');

(iii) the trademark certificate for eggs registered in class 29 by the plaintiff in September, 2008 and which was used on top of the plaintiff's egg boxes from 2008 up to around 2012 ('the trademark');

(iv) (a) the excerpt downloaded via Google on 11th April, 2016 (which was the eve of the commencement of the trial) of the Ballinasloe GAA fixture list for the 'O'Brien's of Galway Free Range Eggs Division 4B North' for four fixtures from September, 2013 to November, 2013 ('the fixture list'). The fixture list was put to Mr. O'Brien on the last day of evidence in the trial together with-

(b) a colour copy of the Galway county under 21A and 21B football champions 2013 with a banner inscribed with 'O'Brien's of Galway' and 'Free Range Eggs' underneath. ('the GAA banner').

3 The Court heard evidence which was subjected to cross-examination unlike the affidavit evidence which was adduced at the interlocutory hearing. Nevertheless the following findings of this Court are similar to those of Gilligan J:

(i) European Communities (Marketing Standards for Eggs) Regulations 2009 ( S.I. No. 140/2009) requires egg boxes to comply with article 12 of Commission Regulation (EC) no. 589 /2008 of 23rd June, 2008 as amended by Commission Regulation (EC) No 598 2008 of 24 June, 2008 which provides for the marketing of eggs. In short egg boxes must disclose whether the eggs are 'free range eggs', 'barn eggs' or 'eggs from caged hens';

(ii) the sunburst box is white in colour with six normal egg units and a Bord Bia quality certificate in the top left hand corner along with a rising sun. There are hens in front and the words inscribed are 'Galway Free Range Eggs';

(iii) the defendants' box is yellow in colour and has six 'bulbous' egg units. It has a distinctive maroon colour front and back to the label with a Galway crest. GAA followers in particular could identify with these latter aspects. The box has a prominent picture of hens on Mr. O'Brien's farm. [1]

Mr. Towey

4 Mr. Towey expressed the belief that the plaintiff owned the name of 'Galway Free Range Eggs' like Guinness or Diageo owns 'Kilkenny' for beer and some other entity may own 'Waterford' for glass. He reluctantly accepted that the defendants were obliged to describe their eggs as free range eggs in order to meet the regulatory requirements for the production and packaging of eggs.

Meeting of October/November, 2012

5 Mr. Towey and Mr. O'Brien agreed in Mr. O'Brien's home over tea around November, 2012 that egg boxes used by the defendants for a few months in 2012 bearing the words 'Free Range Eggs Galway' should be replaced. Mr. Towey was unable to recall many of the details of the conversation which Mr. O'Brien described in his evidence. The Court accepts Mr. O'Brien's evidence to the effect that Mr. Towey said his company did not own the word 'Galway'. Mr. Towey said that he did not remember expressing such a view.

Credibility of witnesses

6 Mr. O'Brien was challenged on different issues, some of which bordered on the irrelevant including whether he complied with planning permission for a hen house and questions about an Bord Bia requirements. He was also questioned about the profitability of his egg sale business by reference to papers downloaded prior to the trial from the Companies Registration Office. This was in order to challenge his credibility in relation to his profitability assertion. Having observed and assimilated the responses of Mr. O'Brien to all questions posed, the Court finds that Mr. O'Brien did the best he could in explaining matters. He was honest and fair in his recall including his account of the conversation about the word 'Galway'.

7 The evidence of Mr. O'Brien and his daughter further revealed a sense of decency and industry in conducting their egg business. They competed as one would expect on pricing. It was clear to the Court that the defendants competed strongly on price in order to achieve sales rather than taking a 'piggy back' on the plaintiff's brand. The multiples play a very significant part in this market by purchasing and selling their own brand of free range eggs also.

8 Mr. Towey and the plaintiff's former financial controller, Mr. Jimmy Dalton gave subjective evidence about potential confusion which they perceived as arising from the defendants' box and the GAA promotions for the defendant. Mr. Towey rarely talks directly to customers about the plaintiff's egg sales. Mr. Towey further admitted that he could not attribute any loss of sales to the stocking of the defendants' eggs in the shops with which the plaintiff did business. In the context of the discussion later in this judgment about the survey evidence, the Court notes that Mr. Towey did not give evidence about the information and instructions which he gave to Mr. Cosgrove of Researchit for a survey that was carried out on 9th July, 2013 in advance of the application for an interlocutory injunction. In fairness, I asked questions later about the engagement of Mr Cosgrove and this aspect was not a particular issue which was sought to be addressed by either side when Mr Towey gave evidence.

Counterclaim

9 Mr. Towey expressed regret at the end of his direct examination that the plaintiff registered the business name 'O'Brien's Free Range Eggs' on the 13th November, 2014 and the plaintiff, through counsel later confirmed that an undertaking will be given by the plaintiff to withdraw the registration of that business name. The plaintiff has not traded with that name and no damages are sought by the defendants for this bad judgement call which was an effort to joust with the defendant.

Mr. Dalton

10 Mr. Dalton explained that the Towey family bought their shares in the plaintiff company from Ms. Catherine McGrath who had successfully grown an egg producing and supply business with a brand called 'Galway Free Range Eggs'. He acknowledged that there was a difference between the two boxes but still offered the view without having interviewed anyone himself to the effect that they could find the packs confusing.

Ms. McGrath

11 Ms. McGrath recounted the history from 1992 of her enterprise and her success in establishing a market for eggs which were described as 'free range eggs from Galway'. She incorporated the plaintiff company in 1994 for that business. Ms. McGrath never got advice about branding. Now that her children are grown up, she rarely shops although she was prompted to add her personal support to the suggestion made on behalf of the plaintiff about potential confusion among shoppers between the brands, names and promotions for free range eggs. She stated that she would not personally confuse the two boxes.

Source of eggs for the boxes

12 The plaintiff sources eggs from free range egg producers inside and outside County Galway. The eggs of both types of producers are packed in the sunburst boxes. The defendants rely on their own egg production but when short on occasion have used the free...