McCambridge Ltd v Joseph Brennan Bakeries

• Jurisdiction: Ireland
• Judge: Mr Justice Peter Charleton
• Judgment Date: 27 May 2014
• Neutral Citation: [2014] IEHC 269
• Docket Number: [2011 No. 2925 P],Record number number 2925P/2011
• Court: High Court
• Date: 27 May 2014

[2014] IEHC 269

The High Court

Record number number 2925P/2011

McCambridge Ltd v Joseph Brennan Bakeries

Commercial

Between:

McCambridge Limited

plaintiff

and

Joseph Brennan Bakeries

Defendant

MCCAMBRIDGE LTD v JOSEPH BRENNAN BAKERIES UNREP PEART 25.11.2011 2011/32/8784 2011 IEHC 433

MCCAMBRIDGE LTD v JOSEPH BRENNAN BAKERIES UNREP SUPREME 31.7.2012 2012/30/8781 2012 IESC 46

HOUSE OF SPRING GARDENS & ORS v POINT BLANK LTD & ORS 1984 IR 611

EDELSTEN v EDELSTEN 1863 46 ER 72 1863 1 DE G J & S 185

WEINGARTEN BROS v CHARLES BAYER & CO 1904-7 AER 877 1904 22 RPC 341

FALCON TRAVEL LTD v OWNERS ABROAD GROUP T/A FALCON LEISURE 1991 1 IR 175 1991 ILT 148 1990/7/1843

JUDICATURE ACT 1877

WALSH v SHANAHAN 2013 EWCA 411 (CIV) 2013 AER (D) 221 (APR)

HOLLISTER INC v MEDIK OSTOMY SUPPLIES LTD 2012 EWCA 1419 (CIV) 2013 BUS LR 428 2012 NLJR 1422 2012 AER (D) 114 (NOV)

SHELDON v METRO-GOLDWYN PICTURES CORP 1940 309 US 390

O'NEILLS IRISH INTERNATIONAL SPORTS CO LTD v O'NEILLS FOOTWEAR DRYER CO LTD UNREP BARRON 30/04/1997 1998/29/11633 1997 IEHC 75

GRANGE MARKETING LTD v M & Q PLASTIC PRODUCTS LTD 1976-7 ILRM 144

JACOB FRUITFIELD FOOD GROUP LTD v UNITED BISCUITS (UK) LTD UNREP CLARKE 12.10.2007 2007/29/6065 2007 IEHC 368

RECKITT & COLMAN PRODUCTS LTD v BORDEN INC & ORS (NO 3) 1990 1 AER 873 1990 1 WLR 491 1990 RPC 341

LEVER v GOODWIN 1886-90 AER 427 1887 36 CH D 1 1887 WN 107 1887 4 RPC 492

WOOLLEY & TIMESOURCE LTD v UP GLOBAL SOURCING UK LTD & THE LACMANDA GROUP LTD 2014 EWHC 493 (CH) 2014 AER (D) 49 (MAR)

COPYRIGHT ACT 1963 S22(2)

HOTEL CIPRIANI SRL v CIPRIANI (GROSVENOR STREET) LTD 2010 EWHC 628 (CH) 2010 AER (D) 85 (JUN)

WADLOW THE LAW OF PASSING-OFF: UNFAIR COMPETITION BY MISREPRESENTATION 4ED 2011 PARA 10.052

HICKEY & CO LTD v ROCHES STORES (DUBLIN) (NO 1) LTD 1993 RLR 196

SYKES v SYKES 1824 107 ER 834 1824 3 B & C 541

DRAPER v TRIST 1939 3 AER 513 1939 56 RPC 225

SAXLEHNER v APOLLINARIS CO 1897 1 CH 893 1897 14 RPC 645 1896-7 13 TLR 258 1896-7 41 SOL JO 331

BAYERISCHE MOTEREN WERKE AKTIENGESELLSCHAFT v RONAYNE (T/A BMWCARE) UNREP RYAN 19.12.2013 2013 IEHC 612

WESTINGHOUSE ELECTRICAL & MANUFACTURING CO v WAGNER ELECTRICAL & MANUFACTURING CO 1912 225 US 604

ZUPANOVICH PARTY LTD v B & N BEALE NOMINEES PARTY LTD 1995 FCA 1424

CELANESE INTERNATIONAL CORP v BP CHEMICALS LTD 1999 RPC 203 1998 AER (D) 493

COLBEAM PALMER LTD v STOCK AFFILIATES PARTY LTD 1968 HCA 50 1968 122 CLR 25

DART INDUSTRIES INC v DECOR CORP PARTY LTD 1994 FSR 567 1993 HCA 54 1993 179 CLR 101 1993 116 ALR 385 1993 67 ALJR 821

LUBRIZOL CORP v IMPERIAL OIL LTD 1997 2 FC 3 1996 71 CPR (3D) 26 1996 122 FTR 319

SEAGER v COPYDEX LTD 1967 2 AER 415 1967 1 WLR 923 1967 RPC 349

ABB LTD v NEW ZEALAND INSULATORS LTD (NO 2) 2007 NZHC 2055 2007 11 TCLR 978

TORT

Passing off

Remedies - Account of profits - Apportionment of profits - Factors to be taken into account - Whether tortfeasor obliged to account for all profits arising from passing off - Whether court could engage in apportionment of profits - Whether approach to account of profits in passing off differing from approach in other intellectual property causes of action - Whether court could determine which profits attributable only to passing off - ABB Ltd v New Zealand Insulators Ltd (No 2) [2007] NZHC 2055, (2007) 11 TCLR 978; Bayerische Moteren Werke AG v Ronayne [2013] IEHC 612, (Unrep, Ryan J, 19/12/2013); C & A Modes v C & A (Waterford) Ltd [1976] IR 198; Cartier v Carlile (1862) 54 ER 1151; Celanese International Corpn v BP Chemicals Ltd [1999] RPC 203; Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50; Dart Industries Inc v Decor Corpn Pty Ltd ("Lettuce Crisper case") [1993] HCA 54; Draper v Trist [1939] 3 All ER 513; Edelsten v Edelsten (1863) 46 ER 72; Falcon Travel Ltd v Owner's Abroad Group plc [1995] 1 IR 175; Grange Marketing Ltd v M & Q Products Ltd [1976- 1977] ILRM 144; Hamilton Brown-Shoe Co v Wolf Brothers (1916) 240 US 251; Hickey v Roches Stores (Dublin) Ltd (Unrep, Finlay P, 14/7/1976); Hollister v Medik [2012] EWCA Civ 1419, [2013] IP & T 577; Hotel Cipriani SLR v Cipriani (Grosvenor Street) Ltd [2010] EWHC 628, (Unrep, Briggs J, 2/3/2010); House of Spring Gardens v Point Blank [1984] IR 611; Jacob Fruitfield Food Group Ltd v United Biscuits (UK) Ltd [2007] IEHC 368, (Unrep, Clarke J, 12/10/2007); Lever v Goodwin (1887) 36 Ch D 1; Lubrizol Corp v Imperial Oil Ltd [1997] 2 FCR 3; McCambridge Ltd v Joseph Brennan Bakeries [2011] IEHC 433, (Unrep, Peart J, 25/11/2011); McCambridge Ltd v Joseph Brennan Bakeries [2012] IESC 46, (Unrep, SC, 31/7/2012); My Kinda Town Ltd v Soll [1983] RPC 15; O'Neills Irish International Sports v O'Neills Footwear Dryer Co Ltd (Unrep, Barron J, 30/4/1997); Peter Pan Manufacturing Corporation v Corsets Silhouette Ltd [1964] 1 WLR 96; Reckitt & Colman Ltd v Borden Inc [1990] 1 WLR 491; Robert J Zupanovich Pty Ltd v B&N Beale Nominees Pty Ltd [1995] FCA 1424; Saxlehner v Apollinaris Co [1897] 1 Ch 893; Seager v Copydex Ltd [1967] 1 WLR 923; Sheldon v Metro-Goldwyn Pictures Corporation (1940) 309 US 390; Sykes v Sykes (1824) 107 ER 834; Walsh v Shanahan [2013] EWCA Civ 411, [2013] 2 P & CR D18; Weingarten Brothers v Bayer & Co [1904-07] All ER Rep 877; Westinghouse Electric & Mfg Co v Wagner Electric & Mfg Co (1912) 225 US 604 and Wooley v Up Global Sourcing UK Ltd [2014] EWHC 493, (Unrep, Pelling QC, 27/2/2014) considered - Hearing on determination of profits directed (2011/2925P - Charleton J - 27/5/2014) [2014] IEHC 269

Cambridge Ltd v Joseph Brennan Bakeries

This judgment was brought before Charleton J. in the High Court. The issues pertaining to the case involved establishing the correct approach to adjudicating an account of profit when a defendant has been found liable for passing off. After previous proceedings involving the defendant"s (Breenan Bakeries) infringement on packaging trademark the issue came before the High Court. The defendant"s new packaging closely resembled that of the plaintiff (McCambridge), and by association the plaintiff alleged that they incurred damages through a lost potential profit. The plaintiff came before the High Court seeking such portion only of the profits (if any) of the defendant from the sale of whole wheat bread in the particular packaging.

Charleton J considered in depth the nature of passing off in such instances and the plaintiff"s right to elect between the remedies of damages or of an account of profit. Charleton J concluded that the tort of passing off requires that a plaintiff prove that by the exercise of commerce, including advertising and marketing, a particular name or get up became associated with the choice of its product in the marketplace so that consumers associated the excellence of the goods or services with a brand or packaging. Charleton J found that the defendant"s conduct was an egregious misuse by a rival in the marketplace and found it suitable that the plaintiff be compensated for their loss. As regards to election of remedy, Charleton J under the guidance of House of Spring Gardens Ltd v Point Blank Ltd [1984] IR 611 and statutory legislation found that the law is construed to enable a choice by a successful plaintiff between damages and an account of profit. Charleston J decided that some passing off cases are close to trade mark cases as to their nature and approach of the tortfeasor, in those circumstances there is little warrant for seeking a nuanced approach of division of profits. Charleton J held that where it is necessary to apportion a percentage of gross profits of a defendant to the wrong done to the plaintiff, this should be approached on the basis of a reasoned approximation. Adding that a broad approach to apportioning profits should be taken by a court, remembering that the plaintiff is the wronged party. The High Court ordered an account as to what profits of the defendant Brennan Bakeries are attributable to its decision to dress up the packaging of its sliced brown bread in a get up that unintentionally passed it off as the highly-regarded loaf of the plaintiff.

1 Mr Justice Peter Charleton delivered on the 27th day of May 2014

2 This judgment concerns the correct approach to adjudicating an account of profit when a defendant has been found liable for passing off. In this case, sliced brown bread. The account of profit remedy in preference to damages was at the election of the successful plaintiff McCambridge on being required by the defendant Brennan Bakeries to choose one or the other.

3 It is argued by Brennan Bakeries as defendant that the correct approach to an adjudication of an account of profit in passing off should only to require the ascertainment and payment of such profits as were made due to the passing off; only such sales as are properly to be attributed to the tortious action, ruling out any gain made from those who were not confused but made a properly informed choice. It is argued by McCambridge as plaintiff that a court should require a defendant to pay profits in respect of all goods which tortiously were decked out and sold so as to resemble their product. This has the advantage of simplicity, since all profits made on this brown bread by the defendant from the commencement of the offending packaging would become those of the plaintiff. Peart J has held this passing off to have been unintentional; McCambridge Ltd v Joseph Brennan Bakeries [2011] IEHC 433. Since the product in question was sold by the defendant Brennan Bakeries for some years in a much different packaging prior to them marketing the brown bread in new packaging that closely resembled that of the plaintiff McCambridge, the appropriate approach to an account of profits is argued by the defendant Brennan Bakeries to be the measure in the jump in their trade attributable to that firm's trespass on the...