Jacob Fruitfield Food Group Ltd and Another v United Biscuits (U.K.) Ltd

• Jurisdiction: Ireland
• Judge: Mr. Justice Clarke
• Judgment Date: 12 October 2007
• Neutral Citation: [2007] IEHC 368
• Court: High Court
• Date: 12 October 2007

[2007] IEHC 368

THE HIGH COURT

Jacob Fruitfield Food Group Ltd v United Biscuits (UK) Ltd

BETWEEN

JACOB FRUITFIELD FOOD GROUP LIMITED AND JACOB FRUITFIELD FOODS LIMITED

PLAINTIFFS

AND

UNITED BISCUITS (U.K.) LIMITED

DEFENDANTS

CAMPUS OIL LTD & ORS v MIN FOR INDUSTRY & ENERGY & ORS (NO 2) 1983 IR 88

RECKITT & COLMAN PRODUCTS LTD v BORDEN 1990 1 AER 873

MISS WORLD LTD & ORS v MISS IRELAND BEAUTY PAGEANT LTD & MURRAY 2004 2 IR 394 2004/31/7206

MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD v GOLDEN VALE FOOD PRODUCTS UNREP COSTELLO 12.12.1985 1985/9/2534

POLYCELL PRODUCTS LTD v O'CARROLL 1959 IJ 34

FISONS v GODWIN 1976 RPC 653

ADIDAS v CHARLES O'NEILL & CO LTD 1983 ILRM 112

KERLY'S LAW OF TRADEMARKS 10ED

BORD TRACHTALA v WATERFORD FOODS PLC UNREP KEANE 25.11.1992 1993/1/109

UNITED BISCUITS UK LTD v ASDA STORES LTD 1997 RPC 513

DSG RETAIL LTD v PC WORLD LTD & ORS UNREP LAFFOY 13.1.1998 1998/5/1152

METRO INTERNATIONAL SA & ORS v INDEPENDEN T NEWS & MEDIA PLC 2006 1 ILRM 414 2005/38/7859 2005 IEHC 309

INTELLECTUAL PROPERTY

Passing off

Interlocutory injunction - Fair case to be tried - Meaning of goodwill - Damage to reputation - Risk of Confusion - "Get up" - Association between "get up" and product - Trade name - First impressions - Balance of convenience and adequacy of damages - Right to protect goodwill - Difficulty in compensating plaintiff's losses - Reckitt & Coleman Products Ltd. v Borden Ink [1990] 1 All ER 873 applied; Polycell Products Ltd v O'Carroll and Others T/A Dillon O'Carroll [1959] Ir Jur 34 followed; Fisons v Godwin [1976] RPC 653 considered; DSG Retail v PC World (Unrep, Laffoy J, 13/1/1998) followed - Injunction granted in respect of Fig Rolls but refused in respect of Cream Crackers (2007/7124P - Clarke J - 12/10/2007) [2007] IEHC 368

Jacob Fruitfield Ltd v United Biscuits Ltd

1 Mr. Justice Clarke delivered the 12th of October, 2007.

1. Introduction

2 2 1.1. The reputation of the Jacobs brands of figrolls and cream crackers hardly needs to be stated. The plaintiffs in these proceedings ("Jacobs") have acquired, through the second named plaintiff, the group of companies known as Irish biscuits (which included the company W & R Jacob Limited) from the French conglomerate Groupe Danone. That acquisition occurred in 2004 and as a result Jacobs acquired the right to various trademarks including the Jacobs brand for this jurisdiction. The rights acquired included those relating to Jacobs' figrolls and cream crackers. Around the same time the defendants ("United Biscuits") acquired the United Kingdom biscuit business of Groupe Danone and as a result acquired equivalent rights to the Jacobs brand for the United Kingdom.

3 3 1.2 United Biscuits also have a long established business (including in this jurisdiction) trading under the "McVites" brand name. It would hardly have needed any evidence to establish that both the Jacobs and McVites brands are extremely well known in the State and have significant market shares. It would also be clear to even the most casual observer that such brands are supported by very significant marketing expenditure by their owners.

4 4 1.3 It is against that background that the intention of United Biscuits to launch a competing McVites brand of both figrolls and cream crackers in this jurisdiction needs to be considered. It is important to emphasise that Jacobs do not claim to have any monopoly in the use of the terms "figrolls" or "cream crackers". There is nothing, per se, therefore, objectionable about McVites seeking to launch their products in this jurisdiction using those names.

5 5 1.4 It is, however, contended that the packaging in which the respective products are in the course of being launched by McVites is such as is likely to lead to significant confusion amongst purchasers with a resulting damage, it is said, to Jacobs established goodwill in the products. Against that background Jacobs have commenced these proceedings claiming injunctive relief and damages for passing off. As a matter of some considerable urgency an application for an interlocutory injunction was heard on Monday and Tuesday the 1st and 2nd of October last. At the close of the argument I indicated to the parties that I would give my decision on the following day (that is Wednesday the 3rd October) but would deliver a detailed reasoned judgment some little time later. This is that judgment.

6 6 1.5 On Wednesday the 3rd October I indicated that I was prepared to grant the interlocutory relief sought on behalf of Jacobs in relation to the figrolls product but not the cream cracker product. The reasons for coming to that view are set out in this judgment.

7 7 1.6 It seems to me to be appropriate to commence with a consideration of the legal principles by reference to which an injunction should be granted at an interlocutory stage in a case such as this. I therefore turn, first, to the law on passing off.

2. The Law - Passing Off

8 2 2.1 As this is an application for an interlocutory injunction, it is common case that the matters which I need to address are those which have been identified in Campus Oil v. Minister for Industry (No. 2) [1993] I.R. 88 and applied by this court on many occasions since. In that context, it is clear that the first matter that needs to be considered is as to whether Jacobs have established a fair case to be tried and, indeed, if Jacobs have so done, whether United Biscuits has established a prima facie defence. With that in mind it is appropriate to turn first to the cause of action which Jacobs assert.

9 3 2.2. It is common case between counsel that the so called triple test for establishing a cause of action in passing off, as identified by the House of Lords in Reckitt & Coleman Products Limited v. Borden Ink, [1990] 1 All ER 873 is applicable in this jurisdiction as well. See for example the judgment of Laffoy J. in Miss World Limited v. Miss Ireland, [2004] 2 IR 394. It is agreed that the three elements of the test are:-

10 (a) The existence of a reputation or goodwill in the claimants product including, where appropriate, in a brand name or get-up;

11 (b) The risk of confusion between what is alleged to be the offending product and the claimants product; and

12 (c) Whether damage to the claimants' goodwill by virtue of any such confusion has been established.

13 4 2.3 In Reckitt & Coleman, Lord Oliver defined reputation or goodwill in the following terms:-

"First he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which is particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically on the plaintiffs' goods or services."

14 5 2.4 That Jacobs have a long established reputation in the biscuit business and, in particular, in relation to both figrolls and cream crackers could not be doubted and was not contested. However it clear from the passage which I have just cited that it is not just the reputation of the product that the court is concerned with. In order for an action in passing off, based on the "get up" of the product, to succeed, it must be established that the claimants concerned have a reputation in the presentation of its product in a particular way by reference to factors such as those identified by Lord Oliver being brand name, trade description or features of labelling or packaging. It seems clear to me that the features in which any such established goodwill may rest have the potential to vary enormously from case to case. This is simply because the features which the public will identify with the product concerned will likewise vary enormously. In some cases the trade name or the brand name may be the dominant feature. In others it may be a combination of the two. In yet further cases a distinctive form of packaging may be the matter most likely to attract the public's attention.

15 6 2.5 There is not, in my view, any one magic formula by reference to which the court can or should assess the aspects of a products presentation to the public, in which its goodwill or reputation may rest. True it is to state that in many of the cases cited in argument the court was, on the facts of the individual case under consideration, particularly impressed by one or, perhaps, two features. But that is not to say that such a feature has, necessarily, any greater status, on the facts of a different case, from any other aspect of the overall "package".

16 7 2.6 In Mitchelstown Co-operative Agricultural Society Limited v. Golden Vale Products Limited (Unreported, High Court, Costello J., 12th December, 1985) the distinctive tubs in which butter substitute had been sold for a period of ten months prior to the arrival of the competing product was sufficient to enable Costello J. to be satisfied that a sufficient reputation in that singular aspect of the get up in question had been established so as to give rise to a fair question to be tried. The fact that a combination of different matters may give rise to the distinctive "get up" was noted by Budd J. in Polycell Products Limited v. O'Carroll and Others T/A Dillon O'Carroll [1959] I.R. Jur 34 at 38. It seems to me to be clear from that judgment that even though a party might not be able to claim a monopoly in each of the individual elements by which the product concerned might be presented, it may, nonetheless, be able to sustain a reputation in the combination of elements sufficient to meet the first test.

17 8 2.7 It also seems to me that the second test identified in Reckitt v. Coleman is...