McCambridge Ltd. has sued Brennans Bread makers claiming that they have deliberately copied the packaging it uses on its brown bread product. McCambridge, widely recognised as a market leader in traditional bread in Ireland, claims that Brennans has infringed the copyright in its packaging and that Brennans is passing off its product as a product of McCambridge.

Michael McCambridge, Chairman of Mc Cambridge Ltd, set out in an affidavit to the Commercial Court that the packaging of the Brennans product was clearly derived from the packaging of Mc Cambridge's brown bread. He said that this had caused confusion within the market and it was of 'grave concern' to McCambridge.

McCambridge acknowledged that its rivals had sold a similar brown bread product for a number of years. However, Brennans changed the design and colour of its packaging in 2008. Mc Cambridge claims that this was a calculated move to copy the predominantly green coloured packaging used by McCambridge.

To succeed in an action for passing off, a plaintiff must be able satisfy a number of requirements. The test for passing off was laid down by Lord Oliver in the English case of Reckitt & Coleman Products Ltd –v- Borden Inc in which he set out that a plaintiff must establish:

  • The existence of a reputation or goodwill in their product;
  • That there has been a misrepresentation by the defendant to the public which has lead, or is likely to lead the public to believe that the goods offered by him are those of the plaintiff;
  • That damage has or is likely to be caused by the misrepresentation.

This test has been approved in Ireland in Miss World Ltd. –v- Miss Ireland Beauty Pageant Ltd and more recently in Jacob Fruitfield Food Group Ltd. –v- United Biscuits (UK).

Jacob Fruitfield involved an action for passing off between Jacob Biscuits and United Biscuits. Jacobs had produced figroll and cream cracker biscuits in Ireland for many years. It did not have a monopoly over the terms 'figroll' or 'cream cracker'. United Biscuits, trading under the name Mc Vities, planned to introduce its own brand of figrolls and cream crackers to Ireland. Jacobs opposed McVities' move on the grounds that the packaging used by McVities would cause confusion among purchasers and would damage the goodwill that the Jacobs had built up in its products.

Clarke J, in the Irish Commercial Court, granted an interlocutory injunction to prevent United Biscuits from selling the figroll product in competition with Jacobs but he did not do so in relation to the cream cracker product. Clarke emphasised that a typical purchaser would base their decision to buy a variety of biscuit on their first impressions of the packaging and would not engage in a detailed consideration of the product.

In relation the figroll packaging, Clarke J held the packaging of the two brands were very similar and that the dominant feature in both packets were the colours, the word 'figrolls' in a particular font, and pictures of figrolls. Clarke J further reasoned that where the identical names of the product make up such a dominant feature of the product, then the risk of confusion is much higher especially where the name of the competing brands are much smaller. On that basis, Clarke J granted the injunction.

However, Clarke J held that the same principles did not apply in relation to the cream cracker packaging. While the colours of the product's packaging were similar, the name Jacobs appeared prominently on its brand of cream crackers. Clarke J held that the reputation in the packaging was based on the Jacobs name which appeared on the packaging. By contrast, the defining feature of the McVities product were the words cream crackers'. The McVities logo was in much smaller print and Clarke J held that it may not have been noticed by a purchaser. Therefore Clarke J was of the opinion that the products were easily distinguishable and refused to grant the injunction.

This gives us some guidance as to the likely consideration that the Commercial Court will give to the McCambridges/Brennans dispute. A key issue will be the distinctive coloured Brennans' logo and whether that is sufficient to distinguish the product from McCambridges. The case will be heard by the Commercial Court on 21 July 2011.

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