Passing off: two key decisions from the High Court

Two recent cases before the Irish High Court highlight the value of an action for passing off as a means of protecting brand features in the absence of trademark registration.

In October 2007 the High Court ruled on a claim by Jacob Fruitfield that its competitor United Biscuits had attempted to pass off its fig roll and cream cracker products as those of Jacob Fruitfield.

In deciding whether the United Biscuits products caused confusion, the High Court noted that neither side had a monopoly over the use of the terms “fig roll” or “cream cracker” and so the fact that both sets of product carried identical names was not an issue. He held that the standard by which goodwill was to be assessed and the risk of confusion to be judged was the standard applied by any significant number of potential customers. The court also stated that it is possible to protect goodwill which has been built up in customers who wish to purchase the claimant’s products but who do not necessarily exercise a high standard of care when purchasing those products. He stated that, in circumstances such as these, where products would be purchased from stacked supermarket shelves with little time spent making a choice, the first impression of the products was key.

In granting an injunction against the sale of the United Biscuits fig roll products, the court said that although the United Biscuits packaging contained the McVities brand name and a blue band towards the top left-hand corner, which was not present on the Jacobs packaging, in other respects the packaging was sufficiently similar and there was an arguable case in favour of a risk of confusion (the lower test for an injunction, where actual confusion need not be proven). However, the court found that although there were broad similarities between the cream cracker product packaging, including a yellow or light orange packet with a white-on-brown name, there were also significant differences, such as the fact that Jacobs displayed its name prominently on their packaging, whereas the McVities brand name was in relatively small print on the competing product. In light of this, the court held that the notional consumer was not likely to confuse the two and refused an injunction.

In July 2008 the High Court delivered its judgment in a claim by Irish Distillers that Cooley Distillery was passing off “St Patrick’s Whiskey” as a Jameson product. Cooley Distillery had stated in materials provided to retailers that its product was to be placed on shelves only next to Jameson whiskey. Irish Distillers claimed that such shelf placing was aimed at establishing in the minds of consumers that it was part of the family of Jameson products.

In granting an injunction against Cooley Distillery, the court stated that while the two products had entirely different names, which was important in establishing that there was no degree of confusion between the verbal elements of the branding, other attributes could still give rise to similar “general visual impressions” of the two products. The court found that a combination of items on the two labels (eg, colouring, type of lettering used and the use of separate labels around the neck of both bottles) would lead consumers to believe that both products were produced by the same company.

These cases provide two slightly differing approaches to determining passing off claims. In Jacob Fruitfield the judge determined similarities on a “first impression” basis, whereas the judge in Irish Distillers went on to take a studied look at both labels and employed a cumulative test of the various label elements. These two cases show that Irish courts are willing to use practical criteria in a particular set of circumstances to assess products, the goodwill-attracting features of which have the potential to vary significantly from case to case.