On 31st July, the Irish Supreme Court held, in a four-to-one majority decision, that Irish food manufacturer McCambridge Ltd is entitled to injunctions restraining competitor Joseph Brennan Bakeries ("Brennans") from marketing its whole-wheat bread in packaging held to be confusingly similar to the distinctive packaging used by market leading McCambridge Ltd.

Whitney Moore, who acted for long-standing client McCambridge Ltd, note that this was the first passing-off case to come before the Irish Supreme Court in 30 years and signifies the increasing importance of brands and branding to businesses and their desire to protect against the appropriation of valuable customer goodwill by competitors.

McCambridge is the market leader in the Irish whole-wheat bread sector with market share of 30% while Brennans is the market leader in retail bread sales across all categories of bread. Brennans' main brand colours are red, yellow and white. The central issue in McCambridge's law suit was the "get-up" and packaging of Brennans' whole-wheat bread.

In March 2011 McCambridge issued proceedings seeking relief for passing-off following the introduction by Brennans of its whole-wheat bread product in newly designed packaging, similar in appearance to McCambridge's well-known plastic re-sealable green packaging. A photograph of the two competing products can be viewed here .

The High Court trial took place over four days in July 2011 with twenty-one witnesses being called, including eleven consumers who gave evidence of setting out to purchase McCambridge bread but coming home with Brennans' product instead. In November 2011 Mr Justice Peart in the High Court held that McCambridge was entitled to injunctions restraining Brennans from passing-off. Brennans shortly afterwards obtained a stay on the injunctions coming into effect pending the outcome of its appeal to the Supreme Court.

Delivering the majority judgment of the Supreme Court on Tuesday, Mr Justice MacMenamin held that the classic triple test for passing off - which required McCambridge to prove (i) that it had a valuable goodwill amongst consumers in the 'get-up' or trade-dress of its product, (ii) that Brennans had engaged in a misrepresentation to consumers that its product was that of McCambridge and (iii) that there had been damage caused to McCambridge's goodwill - had indeed been satisfied and accordingly the High Court was correct to award the injunctions.

In addressing the second element of the triple test, whether there had been a misrepresentation, Mr Justice MacMenamin made a number of interesting findings in relation to the modern-day shopping experience for the type of goods in issue in the proceedings. The judge noted that the overall impression on likely consumers is the litmus test, taking into account consumer perceptions and imperfect recollection and the nature of the transaction. Context is relevant and depends not only on the get-up of the packaging, but also on the manner in which the product is likely to be presented to the consumer's eye. The Court noted that in the fast-moving-consumer-goods supermarket shopping experience, the manner of presentation is important and that products are not always presented in ordered ranks on shelves.

The Court appears to have preferred McCambridge's evidence, that selection of products in a supermarket is a quick exercise where visual cues are relied on rather than close scrutiny, in preference to evidence given by Brennans that consumers tend to pick up and examine the freshness of packaged bread by checking best-before-dates, which in the case of the Brennans product happened to be printed beside the Brennans brand name on the front label. In this context, the Court noted that in a supermarket setting there is typically a high turnover of products where the process of inspection of goods is often not necessary or frequent. In supermarkets consumers are guided by transient perceptions, and even an ordinary careful consumer may engage only in a momentary examination of a product, whether perfectly or imperfectly presented. In Mr Justice MacMenamin's judgment, the evidence of consumers and experts on the behaviour and conduct of consumers in supermarkets which was adduced on behalf of McCambridge in the High Court supported this view.

While it was accepted by both sides that McCambridge did not have any proprietary rights over the type of re-sealable bag, its shape, the colour green or the shape and size of the loaf within it, the Court disagreed with Brennans that the McCambridge packaging should be split down into its individual elements, which Brennans claimed were generic and should be excluded from the Court's consideration of goodwill. The Court instead found that protectable get-up can be greater than the sum of its individual parts and that it is the combination of all the individual elements which can lead to a distinctive and valuable goodwill recognisable to customers. In the Court's view, when taken together the features of the McCambridge pack were not generic and the Brennans packaging went beyond mere resemblance into imitation.

Having found that the classic triple test had indeed been met by McCambridge, the Court ordered that the stay on the High Court injunctions restraining Brennans from passing-off be lifted 48 hours following the judgment. Having lost its Appeal, Brennans must now get its bread loaf in the infringing packaging off the shop shelves by 2nd August and embark on another packaging re-design exercise.

Whitney Moore note that while interlocutory hearings seeking a preliminary injunction in respect of a passing-off arise from time-to-time, a full trial with the benefit of evidence from consumers resulting in a final judgment is a rare event indeed. Moreover, Whitney Moore believe that the McCambridge case is the first occasion on which the Irish Supreme Court has had to consider a case involving passing-off centred on misrepresentation by way of product packaging.

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