Guinness Ireland Group v Kilkenny Brewing Company Ltd

• Jurisdiction: Ireland
• Judge: Miss Justice Laffoy
• Judgment Date: 10 February 1999
• Neutral Citation: [1999] IEHC 100
• Court: High Court
• Date: 10 February 1999

[1999] IEHC 100

THE HIGH COURT

No.4846p/1996

GUINNESS (IRL) GROUP & ORS v. KILKENNY BREWING COMPANY LTD

BETWEEN

GUINNESS IRELAND GROUP E. SMITHWICK LIMITED & SONS LIMITED AND BY ORDER IRISH ALE BREWERIES LIMITED

PLAINTIFFS

AND

KILKENNY BREWING COMPANY LIMITED

DEFENDANT

Citations:

COMPANIES ACTS 1963 – 1990

C & A MODES V C & A (WATERFORD) LTD 1976 IR 198

EWING V BUTTERCUP MARGARINE CO LTD 1917 2 CH 1

WADLOW LAW OF PASSING-OFF 2ED 200

Synopsis

Torts

Passing off; injunction; whether the plaintiffs had acquired an exclusive reputation in the use of the name "Kilkenny" in conjunction with "beer"; whether it was necessary for the plaintiff to establish defendant had an intention to deceive, create confusion or cause the wrong impression; whether the plaintiffs had an established goodwill at the time the defendant was incorporated; whether the public would get the impression of an association between the businesses carried on by the parties

Held: injunction granted restraining defendant from using name and directing defendant to change name

Guinness Ireland Group v. Kilkenny Brewing Company Ltd. - High Court: Laffoy J. - 10/02/1999 - [1999] 1 ILRM 531

In deciding whether to grant the plaintiffs an injunction restraining the defendant from continuing to exist under that name and from using that name, the issue was whether the public would get the impression that the micro brewing and licenced trade carried on in the premises owned by the defendant was associated or connected with the plaintiffs who had an established goodwill in the name "Kilkenny" when associated with beer through their product Kilkenny Irish Beer. There was a real likelihood that the public might get an impression of a connection between the business carried on in the defendant's premises and the brewery business of the plaintiffs whom the public identified with beer or brewing associated with Kilkenny because of their brand name "Kilkenny Irish Beer". It was unrealistic to assume that the name of the defendant could be immured from the public perception so as to avoid giving a wrongful impression of a connection with the plaintiffs' business. The High Court so held in granting the relief sought.

1 Judgment of Miss Justice Laffoy delivered the 10th day of February, 1999 .

2 There has been a tradition of brewing in Kilkenny city for three centuries. In 1710 the Smithwick family established a brewery and that brewing enterprise is still being carried on by the second named Plaintiff. For the first 200 years of its existence the Smithwick enterprise had a competitor, the O'Sullivan brewery, which was established in Kilkenny in 1702. That enterprise was wound up in 1922 and its land and assets were purchased by the second named Plaintiff. For the past 75 years there has only been one brewery operating in Kilkenny - the Smithwick brewery. In 1965 the Smithwick brewery was taken over by the Guinness group of companies (Guinness) and the second named Plaintiff is now a subsidiary of Guinness Ireland Holdings Limited.

3 In 1987 Guinness added a new product to its range of beers - a red beer which has been described as being characterised by its distinctive ruby colour and rich creamy head. Since 1987 this beer has been brewed by the second named Plaintiff at the St. Francis Abbey Brewery in Kilkenny and has been marketed and sold under the name "Kilkenny Irish Beer".

4 All of the Plaintiffs are associated, in that they are all in the Guinness fold, being subsidiaries of Guinness Ireland Holdings Limited, and they are all incorporated in the State. The first named Plaintiff develops, markets and distributes the Guinness brands of beers, ales and stout, including Kilkenny Irish Beer. The third named Plaintiff holds Irish registered trademarks used in connection with the Guinness brands.

5 The Defendant was incorporated on 14th December, 1995 as a limited company under the Companies Acts 1963– 1990. Its primary object as set out in its Memorandum of Association is to:-

".... carry on the business of brewers, distillers,manufacturers and distributors of and merchants and dealers in lagers, beers, wines, spirits, porter, malt, hops, grain, meal, yeast, aerated waters.... and all other commodities and things which may be conveniently used or manufactured in conjunction with any of the above or any similar businesses or manufacturers."

6 With effect from 15th December,1995 the directors of the Defendant included Paul Smithwick (Mr.Smithwick).

7 The existence of the Defendant came to the plaintiffs" attention as a result of a search in the Companies Office carried out following the publication of an article in "The Sunday Independent" on 25th February, 1996 which heralded the establishment of a "brewery, night-club and restaurant" in the Martello Tower on Strand Road in Sandymount in Dublin which would be "home for a new brand of beer, O'Sullivan's, under the imprimatur of the Kilkenny Beer Company....".

8 It is clear from the evidence that there was nothing surreptitious or underhand about the incorporation of the Defendant under the name Kilkenny Brewing Company Limited. From about March 1995 a number of persons, including Mr. Smithwick and Jorg Von Geitz, were developing a concept for establishing a micro brewery, which in broad terms is a small brewery which produces a natural "non-additive" beer, and restaurant in an old building in Kilkenny known as "The Maltings" which up to the mid-1980's had been used by the Smithwick brewing enterprise as malt stores. By November 1995 the planning of the project had progressed to the stage that a contract for the acquisition of "The Maltings" might require to be executed. A corporate vehicle was required to hold the property. Mr. Smithwick wanted the corporate vehicle to have a name which was tied in with the property and with its historic association with the brewing tradition in Kilkenny city. He chose the name "Kilkenny Brewing Company Limited". The intention was that the Defendant would merely hold the property. The business intended to be carried on in "The Maltings" would be carried on by another company, O'Sullivan Brewing Company Limited, the name of which also reflected the brewing tradition in Kilkenny.

9 The micro brewing and restaurant project planned for "The Maltings" has not advanced beyond the stage it was at when the Defendant was incorporated in December 1995. "The Maltings" had not been acquired and the Defendant has never traded in any sense.

10 From February 1996 an alternative micro brewery project in Dublin - the project in the Martello Tower in Sandymount, the subject of the article in "The Sunday Independent" - was under active consideration by Mr. Smithwick, Mr.Von Geitz and their associates. Mr. Smithwick testified that the reference in that article to the Martello Tower project being "under the imprimatur of Kilkenny Beer Company" was incorrect. Independently of the Plaintiffs" investigation following the publication of the article, Mr.Von Geitz sought a meeting with the management of Guinness in Dublin to explore commercial opportunities for the micro brewing project. A meeting was held on 19th April, 1995 at which Mr. Von Geitz outlined to the Management of Guinness, including the managing director and the company secretary of the first named Plaintiff, the micro brewery concept being developed by him and his associates. The understanding of the Guinness personnel was that Mr. Von Geitz and his associates were seeking a distribution arrangement with an established brewing company for the distribution of beer produced in the micro brewery in the Martello Tower and in other micro breweries which they might establish throughout Ireland, including a micro brewery in The Maltings. Mr. Von Geitz was asked by the Guinness management to submit a business plan. However, he was also told that the Guinness management had serious concerns about the use of the name "Kilkenny Brewing Company Limited" by him and his associates because of the potential for confusion with the Guinness product, Kilkenny Irish Beer.

11 The micro brewery project planned for the Martello Tower has not progressed because the question of the entitlement of the promoters of the project to a lease of the Martello Tower from the owner thereof is currently the subject of litigation. In fact, the whole micro brewery project is "on hold" pending the outcome of that litigation.

12 On 22nd April, 1996 the...