McCambridge Ltd v Joseph Brennan Bakeries

• Jurisdiction: Ireland
• Judge: Mr Justice Michael Peart
• Judgment Date: 25 November 2011
• Neutral Citation: [2011] IEHC 433
• Court: High Court
• Date: 25 November 2011

[2011] IEHC 433

THE HIGH COURT

Record Number: No. 2925 P/2011

McCambridge Ltd v Joseph Brennan Bakeries

COMMERCIAL

Between:

McCambridge Limited

Plaintiff

And

Joseph Brennan Bakeries

Defendant

Abstract:

Intellectual Property - Injunction - Confusion - Competitor - Bread marketing - Packaging - Intention - Packaging design - Consumer Protection Act 2007

Facts: Brennans Bread had begun to compete with the plaintiff company in the segment of the bread market in which it had been dominant for 50 year's namely whole-wheat bread. In 2011 Brennans introduced new packaging which the plaintiff considered could cause their customers confusion and they had sought appropriate reliefs. The plaintiff also sought an order pursuant to s. 71 Consumer Protection Act 2007.

Held by Peart J. that while there was no deliberate attempt to imitate or copy the packaging for the purpose of gaining market share, the Court had to consider the overall appearance on a first impression and how it was viewed by the average and reasonably circumspect consumer. The positioning of the logos and colours did not overcome the risk of confusion. The Court would grant the appropriate injustice relief. The case for an order pursuant to s. 71 of the Act of 2007 had not been made out.

Reporter: E.F.

1 When customers visit a large grocery store or supermarket in any part of the country, they are presented with a staggering variety of food produce from which choices must be made. Even within each food category there may be many different brands to choose from, some being more established and well-known than others - the former guarding jealously their established, perhaps even dominant, position in the market, and those others all the while trying overtly or covertly, by fair means and sometimes foul, to ensure that the often unwary shopper will purchase their product rather than that of their competitor, or at least hoping that he/she does so. That is the nature of the competitive market place in which businesses either thrive or fail.

2 A particular type of bread - wholewheat brown bread - is the commodity relevant to these proceedings, or perhaps more precisely, the packaging in which the plaintiff and the defendant each sell it.

3 Bread has been a convenient, relatively cheap and easily produced source of nourishment for the human race for thousands of years. Its composition, shape, taste and texture are as various as those who consume it. It can be white or brown, sliced or unsliced, processed or natural, home-made or mass-produced. It can be round, oval, square, rectangular or even tubular in lengths up to three feet, as with the French baguette! It may even come flavoured with seeds, fruit, herbs or spices of many varieties. It is truly versatile.

4 But for the purposes of consumption, the world is agreed on one thing, namely that whatever its colour, shape, taste, texture or length, it must be fresh. This requirement can be a challenge to the producer since bread by its nature has a very short shelf life, having to be consumed within a day or two of manufacture. It follows that from the moment it emerges from the oven, it must be available for purchase in the shops and supermarkets of the country within hours. The typical household will buy bread every day or every two days. The inexpensive nature of the product and the frequency of its purchase means that not much time is given to the choice being made. It is a fast and regular purchase, which limits the opportunity for the manufacturer to influence the customer's decision.

5 Bread is the product manufactured by the parties to this action. While the defendant company ("Brennans") is one of the largest and well-known manufacturers of a wide range of different bread products in Ireland, it has not until quite recently competed with the plaintiff company ("McCambridge") in the segment of the bread market in which the latter has been dominant for about 50 years, namely wholewheat brown bread. It was not until 2011 when Brennans introduced a new packaging for its product that the plaintiff had any reason to consider that the packaging of the Brennans wholewheat bread resembled their own packaging to such an extent that its customers intending to purchase McCambridge wholewheat bread could be confused into buying the Brennans wholewheat bread in error.

6 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. There is no doubt from the evidence which I have heard that because of the very dominant position which McCambridge wholewheat bread has occupied in the Irish bread market over many years, the public associates wholewheat bread with packaging of the shape, type and colouring used by McCambridge. That is not to say that McCambridge have any proprietary rights as such over that type of re-sealable bag, its shape or indeed the shape and size of the loaf of bread inside. It is accepted that they do not. Nevertheless, Brennans might, albeit unintentionally, present its product to the purchasing public in packaging so similar to that of the plaintiff as to cause a average and reasonably alert and careful purchaser to buy its product in error, in the belief that it was that of the plaintiff.

7 As I have said, the packaging used by Brennans for their wholewheat bread product gave McCambridge no cause for concern until 2011, even though each loaf was almost exactly the same size, shape and colour. Prior to 2011 the packaging of each had been very different and no confusion could possibly have been considered to arise.

8 However, when Brennans decided to change its packaging for this type of bread in 2011, it put its brief out to three different design firms, who came up with a range of designs from which the defendant could choose. Eventually, Brennans decided to work with the design of one particular form, MESH, and following various discussions and design suggestions and changes, Brennans decided upon a packaging design which adopted the same re-sealable type of plastic bag as that used by McCambridge, on which there also appears a green panel on the front of the bag, which, though not identical to that used by McCambridge either in terms of the shade of green or the size and shape of the panel, is nevertheless a green panel.

9 McCambridge points also to other similarities such as the type of overhanging script used on the Brennans packaging and graphics. Brennans on the other hand say that the two packages are markedly different in a number of respects, particularly since its own widely known brand colours which they use on all their breads and which the public readily identify with Brennans bread, namely yellow and red, appear not only across the length of the re-sealable strip at the top of the packaging, but also on a logo which appears prominently on the front of their packaging and in which the word "Brennans" appears. Brennans are of the view that because their own identifiable colouring (red and yellow) appears prominently on the front of the package and, lest there be any doubt, its name appears clearly and prominently on the front of the package, any risk that a member of the public who wishes to purchase McCambridge bread may purchase the Brennans product by mistake is non-existent.

10 McCambridge complain, however, that whatever may be the actual distinctions on a close examination between the appearance of the new Brennans bag and the established McCambridge bag, and even though it is accepted by McCambridge that it has no proprietary right to the style of re-sealable bag, the shape and colour or ingredients of the bread, nevertheless its shape and overall appearance or 'get-up, as it is referred to, particularly when placed beside or near the McCambridge product on the shop shelf, is so similar in overall appearance, that the ordinary member of the public who wishes to buy the McCambridge product may easily in error pick up and purchase the Brennan product. In this regard, the plaintiff refers to a passage from the judgment of Clarke J. in Jacobs Fruitfield Food Group Ltd v. United Biscuits (UK) Ltd (sec below) when he stated:

"There is not, in my view, any one magic formula by reference to which the court can or should assess the aspects of a product's 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".

In Mitchelstown Cooperative Agricultural Society Ltd the Golden Vale Products Ltd (Unreported, High Court, Costello J, 12 ^th December 1985) the distinctive terms in which butter substitute had been sold for a period of 10 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 Ltd 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 on each of the individual elements like which the product concerned might be presented, it may, nonetheless, be able to...