In McCambridge Ltd vs Joseph Brennan Bakeries, rival bakeries fought over allegedly confusing packaging which, McCambridge said, passed off Brennan’s wholemeal bread as a McCambridge product. But were the similarities just generic? Rosanna Foster reports on the judgment.
Topic: Labelling and packaging
Who: McCambridge Limited v Joseph Brennan Bakeries
When: 31 July 2012
Where: Supreme Court of Ireland, Dublin
Law stated as at: September 2012
Joseph Brennan Bakeries ("Brennan") appealed a High Court decision made against it in November 2011 which granted an injunction restraining it from distributing or selling its wholemeal bread product by means of packaging confusingly similar to that sold by McCambridge Limited ("McCambridge").
Both the claimant and the defendant are well-known bread producers in Ireland. McCambridge is a market leader in the wholemeal brown bread segment of the market, with a 30% market share.
Brennan on the other hand, is a market leader in all bread sales, with a wide range of bread products, but with only a 6% share of the wholemeal brown bread market. All Brennan's products are sold in its brand colours, red, yellow and white apart from its wholemeal bread product.
In 2010 Brennan decided to re-design its wholemeal bread packaging with a view to increasing its share of this market segment. It retained a design agency called Mesh Design Limited ("Mesh") for the purpose. Prior to the re-design, the Brennan product was already the same shape and size as the McCambridge product.
Brennan had McCambride packaging in mind when redesigning its own pack
In the High Court last year Peart J. found that the evidence of the discussions between Brennan and Mesh indicated that the representatives of both companies had the leading McCambridge product packing in mind during the development of the new packaging. In deciding the colour of the panel appearing on the front of the bag for example, Brennan decided against lime green in favour of a darker shade, which as Mesh pointed out, made it more like the McCambridge packaging.
McCambridge brought an action for passing off against Brennan on 30 March 2011 following the introduction of the new packaging. In the High Court McCambridge argued that the newly designed Brennan packaging shared a number of the features of its own packaging, including the use of a similar shade of green, white on green writing, the use of a stylised signature in a similar font and the depiction of a head of wheat.
For an action in passing-off to be successful in a packaging case, a claimant must prove that he has goodwill or a reputation in the business carried on using a particular get-up, that the defendant's similar get-up amounts to a misrepresentation by the defendant to the public leading the public to believe the defendant's products are those of the claimant, and that the claimant has suffered or will likely suffer damage to its goodwill or reputation as a result of the misrepresentation.
Brennan argues that McCambridge pack features not distinctive
Brennan conceded that McCambridge did have goodwill in the business carried on in respect of its wholemeal bread product and its packaging. Brennan argued, however, that the goodwill was based on a number of generic features which were insufficiently unique or distinctive to be protected.
In relation to misrepresentation, Peart J. found that evidence presented by McCambridge showed that in assessing whether a product is likely to mislead the public, or whether there is likely to be confusion, the manner of presentation of that product is an important issue. It was shown that consumers shop in busy supermarkets where products may not be presented in an orderly fashion, very close to competitors' products, presented flat, at an angle, in baskets or in containers. Taking these considerations into account, Peart J found actual or likely confusion and held in favour of McCambridge.
On Brennan's appeal to the Supreme Court, however, Brennan argued that ultimately Peart J. failed to distinguish between the requirement to prove the existence of a misrepresentation, and the risk of confusion in market, and had not in fact found any misrepresentation.
MacMenamin J., giving the majority judgment in the Supreme Court, disagreed. He backed the High Court's finding that the overall appearance of the Brennan product placed beside or near the McCambridge product on a shop shelf is so similar in overall appearance that the ordinary member of the public may easily in error pick up and purchase the Brennan product when they had intended to purchase the McCambridge product.
Similarities "went beyond mere resemblance into imitation"
While Brennan had suggested that the McCambridge packaging was made up of generic features, the Supreme Court held that the combination of features on the McCambridge packaging did form a protectable get up, and the similarities of the Brennan packaging went "beyond the realm of mere resemblance into imitation".
Brennan also argued that the trial judge had chosen the "wrong hypothetical consumer", choosing a "careless shopper" who would put a product into their trolley or basket without looking at it, rather than a "reasonable customer" who would actually look at a product.
"FMCG/supermarket" environment taken into account
MacMenamin J. found that this approach failed to consider the evidence presented on "fast moving consumer goods displayed on the supermarket shelf" in contrast to those sold over the counter in a traditional grocer's shop. It was shown that ordinary, reasonable, prudent customers do not in fact frequently carry out a detailed examination of a product's packaging before adding it to their trolley or basket.
In the first instance trial, McCambridge had called eleven witnesses in the High Court who testified that they had accidently bought the Brennan product thinking it was the McCambridge product. This proved to the court that McCambridge had sustained some loss of trade and damage to goodwill was therefore established.
Why this matters:
The majority appeal decision in this case was arrived at in part due to the evidence which McCambridge had presented regarding the behaviour of modern consumers who shop in supermarkets, where the shelves are not always neat and tidy, with rival products sometimes becoming jumbled up.
If this approach were more widely applied, packaging designers would need to be aware of the possibility of confusion where a product is seen at an angle or somehow obscured, amongst other similarly shaped and packaged products. If a "reasonable consumer" is unlikely to examine a product closely or at all prior to making their purchasing decision, then differences in packaging might have to be more noticeable to avoid accusations of misrepresentation and passing off.