Symonds Cider English Wine Company Ltd v Showerings (Ireland) Ltd

• Jurisdiction: Ireland
• Judge: Miss Justice Laffoy
• Judgment Date: 10 January 1997
• Neutral Citation: [1997] IEHC 1
• Court: High Court
• Date: 10 January 1997

[1997] IEHC 1

THE HIGH COURT

No. 6155P/1996

SYMONDS CIDER v. SHOWERINGS (IRL) LTD

BETWEEN

SYMONDS CIDER & ENGLISH WINE COMPANY LIMITED

PLAINTIFF

AND

SHOWERINGS (IRELAND) LIMITED

DEFENDANT

Citations:

AMERICAN CYANAMID V ETHICON LTD 1975 AC 396

CAMPUS OIL LTD V MIN FOR INDUSTRY & ENERGY 1983 IR 88

MITCHELSTOWN CO-OPERATIVE AGRICULTURAL SOCIETY LTD V GOLDEN VALE FOOD PRODUCTS LTD UNREP COSTELLO 12.12.85 1985/9/2534

B & S LTD V IRISH AUTO TRADER LTD 1995 2 IR 142 1995 2 ILRM 152

NWL LTD V WOODS 1979 3 AER 614

DRYSDALE & SILVERLEAF PASSING-OFF LAW & PRACTICE 2ED 142

SERIES 5 SOFTWARE LTD V CLARKE & ORS 1996 FSR 273

WESTMAN HOLDINGS LTD V MCCORMACK 1992 1 IR 151

THERMAWEAR LTD V VEDONIS LTD 1982 RPC 44

TRADE MARKS ACT 1996 SCHED 3 ART 3(3)

TRADE MARKS ACT 1963 S17

TRADE MARKS ACT 1963 S17(2)

TRADE MARKS ACT 1963 S16(b)

TRADE MARKS ACT 1963 S40(1)

TRADE MARKS ACT 1996 S52

DALGETY SPILLERS FOODS LTD V FOOD BROKERS LTD 1994 FSR 504

TRADE MARKS ACT 1996 S24

TRADE MARKS ACT 1996 S24(1)

TRADE MARKS ACT 1996 S24(2)

TRADE MARKS ACT 1996 S24(3)

TRADE MARKS ACT 1996 S24(4)

TRADE MARKS ACT 1996 S100

Synopsis:

Intellectual Property

Passing off and trade mark infringement proceedings concerning cider cans - damages not adequate remedy for either side - balance of convenience - new can being introduced by plaintiffs - whether s.24, Trade Marks Act, 1996 applicable - Held: Injunction refused due to introduction of new can - s.24 inapplicable to proceedings already initiated - (High Court: Laffoy J. - 10/01/1997) - [1997] 1 ILRM 481

|Symonds Cider & English Wine Co. Ltd. v. Showerings (Ireland)

Ltd.|

1 JUDGMENT of Miss Justice Laffoy delivered on the 10th day of January, 1997

2 The Plaintiff is a company incorporated in England and is part of the HP Bulmer group, the world's largest cider maker. The Plaintiff and its predecessors have been making cider for sale under the trade mark "Scrumpy Jack" since at least the early 1980's in England and have been selling that product in cans and bottles and on draught throughout the United Kingdom. The Plaintiff has about 7.4% of the canned cider market in the United Kingdom and overall has about a 4.9% market share in cider in the United Kingdom.

3 "Scrumpy Jack" has been imported into Ireland and sold on the Irish market since 1991. "Scrumpy Jack" has a 17% share of the canned cider market in Ireland and the turnover in Ireland in 1995 for "Scrumpy Jack" amounted to in excess of £730,000.

4 "Scrumpy Jack" has been advertised and promoted extensively in Ireland and in the year 1995 in excess of £240,000 was expended in advertising "Scrumpy Jack" in Ireland. Moreover, it is contended by the Plaintiff that the marketing of "Scrumpy Jack" in Ireland has benefited from the "spill over" effect of extensive advertising of the product on terrestrial and satellite television channels in the United Kingdom.

5 Since 1991 "Scrumpy Jack" has been marketed and sold in Ireland in a gold coloured 500 ml can. The get-up of the can was refined twice in the period between 1991 and 1996. The features of the can which was on the market in June 1996, which, for the sake of clarity, I will refer to as "the Plaintiff's old can", were as follows:-

6 (a) It was a bright shiny gold colour incorporating a co-ordinating gold coloured cap;

7 (b) The name "Scrumpy Jack" in large brown script appeared in a prominent position in approximately the centre of the can;

8 (c) Above the name "Scrumpy Jack" was a logo, the dominant feature of which was a display of red apples on either side of an old fashioned cider press;

9 (d) Above the logo was the house mark "Symonds";

10 (e) Below the name "Scrumpy Jack" was a description of the product - "strong cider";

11 (f) Below the description was a note concerning the nature of the contents;

12 (g) Below that note was a statement of the alcohol content (6%); and

13 (h) There were two narrow brown lines at the shoulder and two narrow brown lines at the bottom of the can.

14 Since March 1991 the Plaintiff has been the registered proprietor of the following trade marks in Ireland:-

15 (i) Trade mark 143341 for the words "Scrumpy Jack" in respect of cider; and

16 (ii) Trade mark 150918 for a label showing the name "Scrumpy Jack" with the apples/cider press logo and the name Symonds over it for cider.

17 The Defendant is a company incorporated in this jurisdiction and is part of the Cantrell & Cochrane group, which is one of the largest drinks groups in Ireland. The Defendant is the market leader in cider in Ireland. In the year ended 30th April, 1996 it had a 50.5% market share in the off-trade in its brands "Stag", "Linden Village", "Strongbow" and "Bulmers" (the trade mark in which it owns in Ireland). During the five years prior to 1996 the Defendant developed four additional brands of cider, which it classifies as tactical brands, to complement its established brands. The dispute the subject of these proceedings concerns one of these tactical brands which has been called "Annerville Golden Scrumpy" in the affidavits filed on behalf of the Defendant in these proceedings. For the sake of brevity I will refer to this product as "Golden Scrumpy", but it is not to be inferred from this that I have formed any view as to the name by which this product is commonly known in the market. In accordance with its policy in relation to tactical brands, the Defendant did not advertise "Golden Scrumpy".

18 "Golden Scrumpy" came on to the market in late June 1996 and was marketed by the Defendant in a 500 ml gold coloured can. The Defendant's can incorporated the following design features:-

19 (a) It was a bright shiny gold colour with a co-ordinating gold cap, the colour being very slightly different to that of the Plaintiff's old can;

20 (b) The name "Golden Scrumpy" in large brown script appeared in a prominent position approximately in the centre of the can;

21 (c) Above the name was a logo showing two barrels surrounded by a display of red apples with green leaves;

22 (d) Above the logo was the name "Annerville";

23 (e) Below the name "Golden Scrumpy" was the description - "Traditional Cider";

24 (f) Below the description was a statement of the alcohol content (6%) with the words "strong cider" on a red banner below the statement;

25 (g) Below that was a note concerning the contents; and

26 (h) There was a green band at the shoulder bearing the words "premium quality" and a green band at the foot of the can bearing the words "served chilled".

27 These proceedings were initiated by Plenary Summons which issued on 11th July, 1996. On 12th July, 1996 the Plaintiff issued a Notice of Motion seeking interlocutory injunctive relief framed in broad terms restraining the Defendant from infringing the Plaintiff's Irish registered trade marks Nos. 143341 or 150918 or either of them and from passing off goods not of the Plaintiff's manufacture as and for the Plaintiff's goods and, more specifically, orders restraining the Defendant -

28 (i) from selling, offering for sale or advertising for sale, or distributing or otherwise dealing in cider under the mark "Golden Scrumpy" or any other mark which by reason of its similarity to the trade mark "Scrumpy Jack" is likely to cause confusion or deception or to lead to cider of the Defendant being passed off as or for the cider of the Plaintiff, and

29 (ii) from marketing, advertising or promoting cider in any can or other container having a get-up so nearly resembling the Plaintiff's "Scrumpy Jack" get-up as to be likely to cause confusion or deception, and to lead to cider of the Defendant being passed off as the cider of the Plaintiff.

30 The Motion was grounded on the affidavit of Peter Winters (Mr Winters), the manager of the Plaintiff's business in Ireland, which were sworn on 11th July, 1996. On 30th July, 1996 the Defendant issued a Notice of Motion claiming, inter alia, a declaration pursuant to Section 24 of the Trade Marks Act, 1996(the 1996 Act) that the threats of infringement of trade mark proceedings by the Plaintiff against the Defendant were unjustifiable and an injunction against the continuation of such threat. This Motion was grounded on the affidavit of John Keogh, (Mr Keogh) the marketing director of the Defendant, which was sworn on 28th July, 1996 and which also responded to the Plaintiff's Motion and the affidavit which grounded it.

31 Both Motions came on for hearing on 15th October, 1996 and were heard over four days. In the interim a very considerable number of affidavits were filed by both parties. In all, at the hearing there were twenty-nine affidavits before the Court, which including exhibits, comprised approximately six hundred pages. In addition to four further affidavits from Mr. Winters and three further affidavits from Mr. Keogh, there were affidavits from experts (three from graphic designers, five from trade mark agents, two from market research specialists and one from a linguistics expert) and from lay witnesses (seven on the issue of confusion and two on the issue of the use of the word "scrumpy" in Ireland). The affidavits are replete with conflicting evidence of fact and conflicting opinions and with accusations and counter accusations which, having regard to the issues which arose on the application, had no purpose other than to discredit the opponent.

32 In his grounding affidavit sworn on 11th July, 1996, Mr Winters disclosed that it had been the Plaintiff's intention to update the get-up of the "Scrumpy Jack" can and to launch a new can in or about September 1996. The evidence establishes that cans with the new get-up were available in retail outlets from mid-July 1996 in six packs. The can with the new get-up, which, for the sake of clarity, I will refer to as "the Plaintiff's new can", was put on the market in August 1996. There is uncontroverted evidence that...