S.C. No. 466 of 2011

IpsofactoJ.com: International Cases [2012] Part 8 Case 11 [SCIre]


SUPREME COURT OF IRELAND

Coram

Joseph Brennan Bakeries

- vs -

McCambridge Ltd

Denham CJ

Hardiman J

Fennelly J

Clarke J

MacMenamin J

31 JULY 2012


Judgment

Justice MacMenamin

Background

  1. On the 25th November, 2011, the High Court (Peart J.), delivered judgment in these proceedings, holding that the appellant herein, (“Brennan”), had engaged in passing off its wholemeal bread as being the product of the respondent (“McCambridge”). The High Court judge granted an injunction restraining Brennan from manufacturing, distributing or selling its wholemeal bread product by means of packaging confusingly similar to the McCambridge product whether by way of colouring, layout, positioning of text or otherwise.

  2. The issues raised in this appeal are relatively limited. There is no real dispute between the parties as to the evidence which was before the High Court judge, or as to the legal principles applicable. The question for this Court is whether the learned trial judge erred in applying those legal principles in the light of the evidence before him. What follows is a description of the evidence before the learned High Court judge, an analysis of the legal principles and their application to the facts as found.

    The McCambridge Business

  3. McCambridge commenced business in 1945 as a grocery shop. The retail part of the undertaking traded up to 1985. The present company was incorporated in 1970, and took over some aspects of the old business, including the manufacturing and sale of stone-ground brown bread and soda bread. The bread market can be seen in a number of segments. One such segment of the market is in “wholemeal bread”. At 30% of this segment McCambridge is without doubt the leading trader.

    The Brennan Business

  4. Brennan is the market leader in retail bread sales in all categories in the State. It is a family owned company founded in the 1960s. It sells a wide range of bread products, including white and brown pans. Part of its activities includes selling brown soda bread. It has been doing this for the past 25 years. In general, the Brennan brand colours are red, yellow and white. The vast majority of its products are sold in packaging which displays these colours (see photograph 1). The one exception to this is its wholemeal bread product which can be seen second from the right at the bottom of row of photograph number 1.

    The Packaging at Issue

  5. Uniquely, among all the other Brennan products, its wholemeal bread is sold in a resealable pack. The central issue here is as to the “get up” and packaging of Brennan’s wholemeal bread. McCambridge contend that Brennan is passing off its product as being McCambridge’s. For convenience it will be of assistance in what follows to look also at photograph 2, which shows, on the left, the McCambridge product; at the centre, Brennan’s “old” packaging prior to 2010; and at the right, the packaging which is the subject matter of this case.

  6. McCambridge, in turn, has sold its wholewheat bread product in a resealable pack since 1998. The bag is made of plastic type material. Embossed on this is a centrally positioned printed block, predominately green in colour, but containing overhanging text in fancy script, comprising the words “John McCambridge”. This printed block acts as a “label” on the packaging; the remainder of which is transparent so as to enable the consumer to see the product.

  7. Colours can be graded by what is termed “Pantone” numbers and letters. The shade of colour green appearing on the McCambridge packaging is “Pantone 343C”. From the year 2003 onwards, the “McCambridge” name on this block was in an arc, in printed lettering. Later, the package displayed the signature “John McCambridge” in fairly small writing. The current package, introduced in the year 2008, contains the same signature, but in rather larger script. The block on this package contains writing underneath the signature. This says “Irish Stone-ground Wholewheat bread”. At the base of the block can be found the words “a tradition made fresh every day”. At the very top, on a band running across the package above a dotted line, can be found the words “yeast free, no added sugar, low fat”.

  8. The learned trial judge described the present McCambridge package as a “plastic resealable bag with distinctive graphic elements thereon such as a sheaf of wheat and the McCambridge name, as well as distinctive colouring, the most significant being a dark green panel appearing on the front of the bag”. He had no doubt that the public associated McCambridge with the wholewheat bread, and with the packaging of the shape, type and colouring just described. However, he did not make any finding that McCambridge had, or could have had, any proprietary right over that type of resealable bag, its shape, or the shape or size of the bread loaf inside. What may actually be legally protected is explained later in this judgment.

  9. As indicated earlier, Brennan sells white and brown bread products in a much wider range over the entire retail market. The packaging it uses for wholemeal bread has evolved over the past three years. The “old” Brennan packaging, illustrated at the centre of photograph number 2, comprised of a non resealable flow-wrap bag with horizontally configured graphic elements. The bread was similarly “configured” and packed “cross wise” from the consumers’ standpoint as viewed on the supermarket shelf. That package was green in colour. The Pantone number of the package was 341C. That colour was very close to that of the McCambridge packaging. However McCambridge made no complaint about this earlier packaging, and no confusion could have arisen between the products as they were presented on the supermarket shelf. By the relevant time we are dealing with, 2011, Brennan was in a position to use the same type of container as McCambridge. What was to be put on it was decided by late 2010.

  10. In the year 2010, Brennan’s market share in the wholemeal segment was no more than 6%. It wished to increase that share. It decided to put the task of further redesigning its package out to tender. A number of design agencies were invited to make a “pitch” for this purpose. Brennan prepared what is termed a “pitch brief” giving information to agencies which might be interested in taking on the work. Ultimately, Brennan settled on a firm called Mesh Design Ltd (“Mesh Design”). In the months of September to October, 2010, Mr. Ivan Hammond, Brennan’s then recently appointed head of marketing, carried on the discussions with Ms. Cora Murphy, Managing Director of Mesh Design. They considered the elements of the new packaging for the Brennan product in great detail.

  11. In what follows, it is important to emphasise that the learned trial judge held that Brennan’s misrepresentation had been innocent, albeit actionable. Nonetheless, clearly both Brennan and Mesh Design had McCambridge’s strong market position very firmly in view. One of the tasks assigned in the “pitch brief” was to persuade consumers to switch from “the leading brand”, that is McCambridge. The evidence before the learned trial judge showed that the Brennans and Mesh Design representatives had the McCambridge packaging in mind during their many contacts. The issue was mentioned more than once. One of the earliest design proposals from Mesh Design actually contained, in the same sequence, some of the words to be found on the McCambridge packaging. Those words were “yeast free, no added sugar, low fat”. In the case of the Brennan packaging however, Mesh Design had added to these, the words “suitable for freezing”.

  12. Mr. Hammond and Ms. Murphy discussed the colour of the block to be placed on the new Brennan package. There was discussion whether the printed rectangular block on the package might be a lime green colour. Brennan decided against this, and ultimately chose a shade of green, (Pantone 7484C), which as, Mesh Design pointed out, brought the concept closer to the McCambridge packaging. Ms. Murphy was closely cross examined in Court in relation to other elements of the Brennan packaging before the learned trial judge. She denied that the cream print on their client’s package was an imitation of that to be found on the McCambridge bag. She contended that the printed element was more of a “buttery cream” colour compared to that on the McCambridge bag.

  13. It is important to emphasise that some for of imitation of a market leader’s packaging is not unknown. It is part of competition. Competition between market players is not only lawful but to be actively encouraged. It makes for consumer choice. But unfair competition, in the shape of passing off a product as being one produced by another manufacturer is unlawful. Nonetheless, competitors sometimes configure the packaging of their product in a manner similar to that of market leaders. The question then arises as to whether the new competitor is merely “living dangerously”, or whether there is actually passing off. The dividing line between the two may be very thin.

  14. Brennan selectively launched its new packaging design on the container in a number of locations starting in Dublin and Cork in January, 2011. This new packaging can be seen to the right of photograph 2. It continued to distribute the older, pre 2010, form of packaging in some other parts of the State until April, 2011, when it extended the use of the new packaging to the entire of the country. By then McCambridge had raised its objection to this conduct in a letter from its solicitors of the 18th March, 2011.

    The Proceedings

  15. The proceedings herein were commenced on 30th March, 2011. McCambridge brought a motion for an interlocutory injunction returnable for the 6th April, 2011, which did not proceed as the matter was transferred into the Commercial Court and an early date was fixed for full hearing. Ultimately the claim came on for hearing on 21st July, 2011.

  16. McCambridge could hold no proprietary right in the transparent plastic packaging itself as it is “generic”. The central question which arises is as to whether the Brennan package, taken as a whole in its “get up”, constitutes a passing off. It cannot be denied that some of the resemblances between the two packages are simply common to the trade or “generic”. The colour green is not only used by Brennan and McCambridge but also some other, smaller competitors. It is said to suggest freshness. However, here, McCambridge identifies a series of features in its package which it contends are not generic, but are unique to its product. Mr. Anthony Aston S.C., counsel for McCambridge, refers to nine headings of similarity. These are:

    1. the size, shape and overall layout of the packaging;

    2. the colouring, and in particular the predominant use of a shade of green, said to be virtually identical to that used in the McCambridge packaging;

    3. white on green writing;

    4. the use of an off yellow colour panel the base of the block;

    5. the utilisation of a stylised signature in similar font;

    6. script overhanging against the main green panel;

    7. the overall colour schemes which are stated to be confusingly similar;

    8. the depiction of a head of wheat on the Brennan packaging which is reminiscent of the photograph of ingredients appearing on the McCambridge packaging;

    9. the shadow effect behind the signature of the words “Joe Brennan” and the word “wholewheat” on the Brennan packaging rendering it more similar to the colour green in the McCambridge container.

  17. The fact that there are resemblances is not dispositive of the case. Mere similarities are not sufficient to constitute passing off. However, McCambridge submits that one aspect of this case distinguishes it from other decided authorities here. In such other cases, no witnesses were called to testify that they had actually been confused by the resemblances between the two products. However, here, a total of eleven witnesses testified in the High Court that they had actually purchased the Brennan product in the mistaken belief that it was the McCambridge product. One witness, a shopkeeper, Paul Lynam, testified that two of his customers brought the Brennan bread back to his shop, having made the error. Another witness, a Ms. Kerry Brink, testified that she actually took the Brennan product from a shelf in a shop when she had intended to select McCambridge bread. She only noticed her mistake as she approached the till. There was also expert evidence on both sides as to the behaviour and conduct of consumers and as to the manner in which those consumers act in supermarkets.

  18. In anticipation of the possibility of an injunction application, a director of Brennan’s, Mr. Colm Brennan, swore an affidavit. There, he claimed that, at all times, Brennan had tried to develop packaging that would promote the advantages of its product, while leveraging the Brennan brand, but clearly distinguishing his product from McCambridge’s. However the case made by Brennan’s counsel in this appeal is subtly but importantly different. Brennan now contends that any confusion which may have occurred between the two products is not actionable, as any confusion derives from elements of the package which are “generic”. Clearly then, the issue as to the “generic features” shared between the two packages is of considerable significance. I will return to it later. I turn next to considering the tests which are applicable in determining whether or not there has been a passing off.

    The Triple Test for Passing Off: Reckitt and Coleman Products Ltd v Bordan Inc.

  19. It is common case that the applicable criteria for establishing passing off are to be found in the “triple test” laid down by the House of Lords in Reckitt and Coleman Products Ltd v Bordan Inc. [1990] 1 W.L.R. 491. Lord Oliver of Aylmerton explained the three aspects of the test in the following way at p. 499 of his judgment:

    The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get up is recognised by the public as distinctive specifically of the plaintiffs’ goods and services. Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with the particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

  20. This test was approved by Laffoy J. in Miss World Ltd v Miss Ireland [2004] 2 I.R. 394; and later by Clarke J. in Jacob Fruitfield Ltd v United Biscuits (UK) Ltd [2007] I.E.H.C. 368. In Jacob Fruitfield the latter judge paraphrased the three elements of the test as being:

    1. the existence of a reputation or goodwill in the claimant’s product including, where appropriate, in a brand name or get up;

    2. misrepresentation leading to confusion between what is alleged to be the offending product and the claimant’s product; and

    3. whether damage to the claimant’s goodwill or reputation by virtue of any such confusion has been established.

    (See the judgment of Nourse L.J. in Consorzio del Prosciutto di Parma v Marks and Spencer plc [1991] R.P.C. 351 and Ervan Warnink B.V. v J. Townend and Sons (Hull) Ltd [1979] A.C. 731 where Lord Diplock set out essentially the same criteria but categorised under five headings). In what follows the triple test will be analysed in more detail.

  21. As was pointed out in Reckitt and Coleman, the whole external appearance of the product as it was presented to the public prior to purchase can be taken into account. This includes the size, shape, colour of a container and its overall external appearance. All were held to be capable of giving rise to a finding of misrepresentation, once distinctive reputation was established. The House of Lords held that the defendant’s product had been designed, packaged and marketed in a manner which imitated the plaintiff’s product. Even though the defendant had taken some steps to distinguish its product from the plaintiff’s, it held that those steps were insufficient.

    (a) Reputation or Goodwill in the Product

  22. In Jacob Fruitfield, Clarke J. commented that there is not any one magic formula by reference to which a court can, or should, assess the aspect of a product’s presentation to the public in which its reputation may rest. It can be said without irony that a common feature in the cases cited in argument to this Court, is the extent to which they were decided on their own facts. This is not to say however that the facts of any one case are all equivalent in value. In some cases, a very small number of individual features together were held to be sufficient to constitute a passing off – if those combined features are sufficiently identified with the product, and are distinctive in the public mind.

  23. As a general proposition, unique or individual features are easily judged or identified. However the authorities clearly establish that a combination of different elements may give rise to a distinctive get up (see Polycell Products Ltd v O’Carroll and Others T/A Dillon O’Carroll [1959] 1 I.R. Jur. Rep. at 34). Polycell also establishes that such features may, in themselves, be “individually generic”, but that a particular combination of such characteristics may, nonetheless, be sufficiently distinct and identifiable in order to constitute a reputation which will be protected.

  24. In the case at hand, Brennan made the tactical decision to concede that McCambridge held goodwill both in its wholemeal bread product, and in the use of the McCambridge packaging. This concession was specifically made in terms in its defence. While of course the concession is not determinative of the other two elements in the test, no element of the triad is entirely freestanding. The three tests are best seen as being standpoints for considering the overall question as to whether or not passing off has occurred.

    (b) Misrepresentation leading to Confusion

  25. It is necessary now to analyse the question of “misrepresentation” in more detail. The critical point is whether the presentation or packaging of the product leads, or is likely to lead the public, to believe that another manufacturer made the product in question. Is the misrepresentation is likely to cause confusion in the minds of consumers? Brennan’s concession in relation to goodwill cannot be entirely ignored here. It will be remembered that the case Brennan now makes is that the features upon which McCambridge seeks to rely were simply generic. But a number of questions may arise from this. One might enquire what are the precise characteristics of the package in which McCambridge enjoyed goodwill? From that there may follow questions as to whether the goodwill lay in a particular combination of characteristics, identifiable with the McCambridge product. Granted, Brennan makes the case that the goodwill lies mainly in a number of generic features which are insufficiently unique to be protected. But the difficulty is that ultimately one may reach the position of asking how many generic features, taken together, reach the level of being sufficiently or uniquely identifiable so as to constitute a “get up” which the law will protect by way of injunction?

  26. Often, in cases of this type there is a ready answer. It will frequently be contended that the prominent display of a manufacturer’s name is sufficient in order to distinguish the name of a product from that of a claimant. Then there can be no passing off. Counsel for Brennan, Mr. John Gordon S.C., strongly asserted that this was so here. He pointed out that the Brennan name was displayed along the top part of the packaging above the rectangular panel or block; that this part of the packaging was in the traditional Brennan colours referred to earlier; and that, typically, consumers will pick up, and handle bread in order to confirm whether or not it is fresh. He contended that when this happened, the consumer would see the yellow band identifying and distinguishing the Brennan product.

  27. It is true that in many instances the presence of a trader’s name will be sufficient to mark out a distinction. This will be particularly so if the lettering is sufficiently large or prominent; if it is well enough positioned in order to make clear the distinction to any consumer purchasing the product; if it is clearly visible in the place where the product is displayed at the time of sale. The positioning of the vendor’s name may be important. Ultimately the test will be as to the overall impression on the observer created by the packaging.

    Product Presentation

  28. The evidence before the High Court showed that, in assessing whether the product is likely to mislead the public, or whether there is confusion, the manner of presentation of that product is an important issue. If, hypothetically, a distinguishing feature such as a brand name or manufacturer’s identity may become concealed or obscured when a product is presented in a certain way this may be very material. Nowadays, fast moving consumer goods are sold in a supermarket, or even by way of the internet. Products will not always be presented in ordered ranks on supermarket shelves. There was evidence that they may become disturbed by purchasers. Evidence from supermarkets showed that the products may be presented flat, or at an angle, or in baskets, or containers. They may be presented to the consumer in very close proximity to each other at eye level (see photograph 3, where, to clarify, Brennan’s product is to the left, and McCambridge’s product is to the right on the shelving).

  29. All these matters are relevant when considering the “get up” of the product. In certain circumstances, for example, the colour of a label may have a particular importance, even though that colour may not itself attract any proprietary quality. It is of course true that when a member of public purchases goods in the market believing them to be the goods of one manufacturer, it is that manufacturer’s goods that he or she wishes for, and not the name or the get up of the product which is no more than a label signifying its products are those of the manufacturer. It is the reputation of the product that matters, and the association of the name, make, or get up, of the packaging with the product which distinguishes it from that of another manufacturer. Get up is seen as a means of communicating that the goods are those of the kind which hold a particular reputation. Some older authorities suggest that the get up of packaging should be seen as a “capricious addition to the article itself”. They suggest that anything that has a functional value should not be seen as part of the get up of the article. (See for example Hennessy & Co. Ltd v Keating (1908) 25 R.P.C. 361 and Williams JB Company v Bronnley & Co. Ltd. (1909) 26 R.P.C. 765). It may be also that the use of a different and distinguishing strong brand name on a product may be sufficient to distinguish the goods (see Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] F.C.A.F.C. 174).

  30. However in our jurisprudence it is clearly established that protectable “get up” can be greater than the sum of its parts. Budd J. observed as follows in Polycell Products at p. 37:

    I entirely agree with [counsel] when he says that the plaintiffs cannot have a monopoly of colours, or in the use of particular words, or packaging materials. I may say that I did not understand [counsel] to make any such claim on behalf of the plaintiffs. In my opinion they have asserted all along that there complaint is against the use of certain colours, words, and material, and the like, in a certain combination, that forms the basis of their complaint. The whole question here is whether the defendants have adopted a method of packaging which by reason of its similarity and get up to that already used by the plaintiffs is likely to deceive the public.

    [emphasis added]

    Clearly then, even generic features cannot be discounted from the total equation in assessing overall get up.

  31. Thus, now, purchases are frequently made in a very different manner from the era when there were “shopkeepers” and “over the counter” transactions. In dealing with misrepresentation, context is relevant; and that context not only depends on the get up itself but also on the manner in which the product is likely to be presented to the consumer’s eye. If it is established in evidence that a product is likely to be presented in a certain way this may be a highly material consideration also. The evidence before the High Court judge addressed the presentation of these products in the ways shown in the photographs.

  32. The written submissions of Brennan succinctly set out their arguments on these issues. They contend, first, that the learned trial judge failed to distinguish between, on the one hand, the requirement to prove the existence of a misrepresentation, and, on the other, the risk of confusion in market. Counsel contended that the learned trial judge failed to advert to the requirement for McCambridge to establish a misrepresentation on the part of Brennan. He contended that in fact the judge did not find any misrepresentation at all.

  33. For the threshold to be met, it is sufficient that a defendant represents its goods in such a way that it is a reasonably foreseesable consequence that the claimant’s business or goodwill will be damaged. As outlined earlier, proof of intention to deceive is not required. A claimant may prove misrepresentation by calling evidence that the relevant public were in fact confused, but may also succeed in a case where there is no such evidence. The overall impact of the get up is the litmus test, as well as the length of time the conduct complained of has gone on. It will not be answer to a complaint of misrepresentation to contend that an observant person who made a careful examination, or who compared both products side by side would not be misled. The test is, rather, the impression likely to be produced, on the likely customer, taking into account customer perception and imperfect recollection (see Singer Manufacturing Company v Loog (1882) L.R. 8 App. Cas. 15 at 18 and HFSC v Midland Bank [2000] F.S.R. 176 where Lloyd J. emphasised that the level of prudence and the care of the customer depended on the transaction in contemplation. This latter qualification is also material here.

  34. It is necessary then to consider how the learned trial judge directed himself as to the law on misrepresentation in the context of passing off. He expressed himself in this way at para. 10:

    McCambridge complain .... that whatever may be the actual distinctions, on a close examination between the appearance of the new Brennans bag and the established McCambridge bag, even though it is accepted by McCambridge that it has no proprietary right to the style of resealable bag, the shape and colour, or ingredients of the bread, nevertheless its shape and overall appearance or get up as it is referred to, particularly when placed beside or near the McCambridge product on the shop shelf is so similar in overall appearance that the ordinary member of the public who wishes to buy the McCambridge product may easily in error pick up and purchase the Brennan product.

    Later in the judgment (at para. 21) the learned trial judge again emphasised the requirement that a plaintiff demonstrates a “misrepresentation by the defendant to the public”.

  35. The wording of the test is strikingly similar to that used in the authorities cited earlier in this judgment. I am not persuaded that the learned trial judge erred in his statement of the law. In my view he accurately set out the test for misrepresentation. The misrepresentation may consist of conduct or actions which are likely or calculated to harm the goodwill of the claimant or in actions (whether intended or not) calculated to lead the public to believe that the product of one manufacturer is that of another. In my view that is the test which was applied by the learned trial judge.

  36. Did then the learned trial judge err in identifying the ingredients of a risk of confusion? Brennan complain that he chose the “wrong hypothetical consumer” as being the point of reference. Counsel for Brennan adopts the formulation of the test expressed by Clarke J. in Jacob Fruitfield who put matters this way at para. 2.11:

    As is clear from the authorities, a claimant is entitled to protect the goodwill established in the minds of its customers. It is the potential interference with that goodwill that gives rise to the possible cause of action. It has been noted that a claimant is entitled to protection even in respect of a segment of its customers who may not exercise a very high degree of care in selecting the product concerned. That point should, in my view, however, not be exaggerated. There will be certain consumers who may be, for all practical purposes almost indifferent to which product of a type they may buy. At that level it is hard to see how a claimant has any entitlement to the continued allegiance of such customers. It is only where the customer concerned cares sufficiently about the precise product which he or she intends to purchase that a goodwill in that product can, realistically, be said to exist. It is hard to see how there is any goodwill attaching to a product by reference to an utterly careless purchaser. Nonetheless it remains clear that a claimant retains an entitlement not to have improper interference with any goodwill which it may have built up in customers who retain a wish to purchase a claimants product but who may not exercise a very high standard of care in making their choices. In the words of the authorities the claimant retains a goodwill in those customers as well.

    [emphasis added]

  37. On an analysis of the judgment as a whole I consider that the learned trial judge applied the standard of a reasonably prudent shopper who is not in any particular hurry, and is neither overly scrupulous nor dilatory, and who enters the shop with a wish to purchase a loaf of the McCambridge product. These were the terms he used. In my view this was a correct formulation of the test.

  38. Brennan contends, alternatively, that the learned trial judge did not actually apply the standard formulated by Clarke J. in Jacobs Fruitfield. Counsel for Brennan criticises the judgment in that the judge actually held that, if a customer looked at the Brennan product, whether in the customer’s hand, in the basket, or trolley, or at the checkout, that customer would identify the bread as being Brennan’s product by reason of the brand name and distinctive brand colouring. Brennan contends that in such circumstances there could be no confusion in the eyes of the appropriate hypothetical consumer. Brennan also complain that the learned trial judge found the likelihood of confusion arose on the very narrow and erroneous basis that if the loaves of bread were tossed around on the shelves, or were lying flat, customers would not be able to distinguish between the Brennan and McCambridge products.

  39. What the learned trial judge actually said about the evidence before him should be fully quoted here. At para. 28, he observed that:

    [t]he competing loaves of bread are presented to the public in shops and supermarkets for the most part on open shelves of varying designs at or near eye level. Some of these shelves are flat, but some are sloped upwards at angles of varying degrees. On occasion these loaves are presented upright on a shelf. But there has been evidence also to the effect that throughout the day loaves may get tossed around on the shelf, even though when first placed there they were placed in an orderly and tidy way. Therefore any distinguishing features appearing on the front panel, though visible when the product in an upright position, may not be so easily seen later in the day when they may be disturbed from that upright position, and be lying flat.

  40. He commented at para. 29 that:

    .... The result is that even a reasonably careful and observant customer may not read or notice in particular the front panel of the package until it is in his or her hand, because only the end or side of the package is visible on the shelf. For the average shopper therefore, the competing brand name and indeed the distinctive red and yellow brand colours on the Brennans product or other distinguishing features may not be readily and clearly visible when the product is on the shelf. Each product looks almost identical from that angle and vantage point being of the same general shape and size.

  41. He concluded at para. 30 that:

    There is little doubt however, that if the same customer was to look at and examine the product when in the hand, or indeed again when it is in the shopping basket or trolley, or indeed later again at the checkout area the brand name and distinctive brand colouring of the Brennans product would be observed, and any such customer who wanted the McCambridge product would be able to return the Brennans product and replace it with the McCambridge loaf if it was available on the shelf ....

  42. Brennan’s case is that the learned trial judge held that, if a customer actually looked at the product, then he or she would not be confused; but if he or she put the product into a basket or trolley, without looking at it, then there was a potential for confusion. It is said this therefore falls short of what is required to establish a risk that a reasonable customer would be confused. Counsel for Brennan contends that a customer who purchases a product on the basis that it is of the general type and size of the loaf that he or she wishes to buy, without bothering to look at the packaging to see if it is the brand that he or she wishes to buy, is not exercising any care at all, and thus falls within the category of “the careless purchaser” referred to by Clarke J. in Jacob Fruitfield. Hence there can be no misrepresentation. Counsel submits that McCambridge failed to establish, and the learned trial judge ought not to have held, that there was a risk of confusion on the part of consumers exercising the requisite degree of care in purchasing whole-wheat bread.

  43. But in fact the learned trial judge specifically referred to the “careless shopper” by way of contrast to the “reasonable customer”. The Brennan submission misses a critical part of the judge’s rationale. He was addressing evidence as to the phenomenon of fast moving consumer goods displayed on the supermarket shelf. He was not dealing with a traditional grocery shop with a counter, a shopkeeper, and shelves, behind their counter. What was in issue here, and what was clearly in his mind was that even ordinary reasonable prudent consumers do not, in fact, frequently carry out a detailed examination of the product at the time when they take the bread from the supermarket shelf and place it in the supermarket trolley. This conclusion was open to him on the basis of the evidence of shoppers and experts in marketing.

  44. Counsel for Brennan contends that the ordinary prudent shopper will take up the bread and test it, and may then see the Brennan distinguishing brand name. But it must again be remembered that what this court is analysing are findings made by the learned trial judge on the basis of evidence from experts and consumers. There was evidence before him which supported this conclusion. The respondents do not say that there was no evidence before him from which he could make such a finding. The judge also drew attention to, and emphasised the fact that the court should put itself in the shoes of the “reasonably prudent shopper”, described earlier He asked himself the question as to whether such a purchaser was reasonably likely, because of the similarity in get up of the Brennan product to that of McCambridge to exit the shop with the Brennan loaf? He concluded that there was such a likelihood. This is because of the high turnover of products in a supermarket where the process of inspection is not necessary or frequent. I am satisfied that this was a reasonable inference from the evidence.

  45. There was expert evidence before him that the choices Brennan made in late 2010 made their product more like the McCambridge product rather than less, and that the consumer buying in a supermarket is a quick exercise, where visual cues are relied on rather than close scrutiny. He preferred this evidence to Brennan’s, which was to the effect that the products were distinguishable in the market. The fact that he preferred McCambridge’s evidence is not an indication of an error in law. This evidence also referred to research which has established that “parasitic” products which imitate that of another manufacturer can influence customers.

  46. Here and perhaps elsewhere, it is difficult to avoid the inference that what counsel for Brennan was actually criticising were findings made on the basis of evidence before the learned trial judge. Those findings were open to him. In this case his finding was as to the probable conduct of an ordinary prudent customer. I do not think it is open to Brennan on an appeal such as this retrospectively to create an artificial juxta position, unwarranted on evidence available to the judge, between the classical instance of the entirely “careless shopper” and by contrast, of the “prudent shopper”, when the judge was addressing the situation in supermarkets. That juxta position ignored the context. The judge held that ordinary careless consumers may purchase without carrying out an inspection and that there was a sufficient likelihood of this to satisfy the test.

  47. The judge was entitled also to apply his own judgment in assessing the get up of the two products in the context of the transaction involved. He pointed out that the purchase of bread was not something to which “typically much time will be devoted”. He commented that bread is normally picked off the shelf quite quickly, and placed in a basket or trolley without too much careful scrutiny. He did not think that these actions were the behaviour of a careless or indifferent shopper. In my view, there were conclusions he was entitled to reach on the basis of the evidence before him.

  48. There is no indication to my mind that the learned trial judge erred in identifying the relevant test, or applying the legal principles to evidence which were before him. I would also comment that there was a suggestion in the written submission that the “lay consumer” witnesses called by McCambridge to give evidence of having been actually confused must have been in some manner careless. This was not put to them in cross examination.

  49. Brennan next contends that what is required, and what was not established by the evidence was that a substantial number of customers be confused as a result of the packaging. In their written submissions, Brennan put the test this way:

    It is not sufficient to establish that some customers will or may be confused. What is required is to establish that there is a risk that substantial numbers of customers will be confused.

  50. I do not accept that this is the test. Brennan rely on observations in Kark (Norman) Publications Ltd [1962] 1 W.L.R. 380, where Lord Wilberforce made certain observations on the issue. But what that judge actually said was rather different. At p. 384, he said that “[i]t is enough to show that a substantial number of persons likely to become purchasers of the goods are liable to be deceived”. The same principle was put in a different way by Clarke J. in Jacob Fruitfield where he said at para 2.11 that:

    The standard by reference to which the existence of goodwill needs to be judged (and, it follows, by reference to which the risk of confusion also needs to be determined) is that applied by any significant number of potential customers for the products concerned.

    [emphasis added]

  51. Neither authority establishes that it is necessary to establish that a substantial number of customers were actually deceived. It is true that the learned trial judge’s finding was based on what he termed himself “a small number of customers” over a six month period when over four million McCambridge loaves were sold. But the Irish authorities cited to this court, including the decisions of Laffoy J. in Guinness Ireland Group v Kilkenny Brewing Company Ltd [1999] 1 I.L.R.M. 531; and McWilliam J. in Grange Marketing Ltd v M&Q Plastic Products Ltd [1976] 1 I.L.R.M. 144, both show that the learned judges held, in unequivocal terms, that it is not necessary to produce evidence that any specific person (or numbers of people) were actually deceived, provided that the goods are marketed in such a way that they are “calculated to deceive”. The test is not dependent on numbers.

  52. In Grange Marketing, there was, in fact, evidence was actually tendered of a person who had been deceived. However McWilliam J. pointed out in his judgment that this was a matter which simply added weight to the case (see Harrods Ltd v Harrodian School Ltd [1996] R.P.C. 697, to the same effect). The law is, therefore, that while evidence of consumers is not necessary, it may well add weight to a claimant’s case. However the absence of such evidence is not decisive. In the instant case, the learned trial judge clearly concluded that such evidence simply added weight to McCambridge’s case. I am satisfied that there was no error of law on this point. It was a conclusion he was entitled to reach.

    Generic Features

  53. It is necessary then to revert to the argument which was strongly relied on by Brennan, that based on “generic features”. When considering the issue, it is necessary to have regard to those features of the get up which are functional, “generic” or common to the trade. Only the charactertics of an article which act as an indication of origin are truly protected. See the judgment of Fletcher Moulton L.J. in Williams JB Company v Bronnley & Co. Ltd. (1909) 26 R.P.C. 765. This Court has been referred to a range of “generic features” cases including Hennessy & Co. Ltd v Keating (1908) 25 R.P.C. 361; Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] F.C.A.F.C. 174); Imperial Group v Philip Morris [1984] R.P.C. 293; Rizla v Bryant & May Ltd [1986] R.P.C. 389. These cases all concern the usage of the same features or colours by a defendant and the extent to which such usage is nonetheless protected because of a clear identification by brand name. It is a theme touched on by Clarke J. in Jacob Fruitfield, who pointed out that a claimant could not claim a monopoly to a particular form of packaging of a particular size nor to a truly generic type of a product.

  54. Counsel for Brennan submits that the size of the packaging, the use of resealable plastic packaging, the use of descriptors such as “wholewheat” and the use of the colour green are common in the trade, and that McCambridge does not, and cannot enjoy any goodwill in them.

  55. I would be prepared to accept that the size and shape of the packaging is generic. I would go further and accept that so too is the colour green, although the shade is very similar to that used in the McCambridge packaging. Other smaller competitors use the same or a similar colour. But that does not mean those features are to be entirely ignored. Among the features identified earlier, there are others less generic. These include white on green writing; the use of an off yellow colour panel; the utilisation of a stylised signature and similar font; the use of overhanging script against the main green panel, the particular combination of colour schemes; the depiction of the head of wheat and the shadow effect behind the signature of the words Joe Brennan. All of these combined features are to be assessed in the context of the type of packaging and the colour green. Together, all of these features are to my mind not generic. Taken as a combination they prima facie form a protectable get up on the packaging. Because of the similarities, the nature of the wrapping, and package, and its shape, they go beyond the realm of mere resemblance into imitation

    Distinction by Name

  56. Counsel for Brennan relied on the authority of Adidas v O’Neill [1983] I.L.R.M. 112, where O’Higgins C.J. observed that a claim for passing off based on get up alone, and where there is no similarity in brand names is rare. He stated in that case:

    Adidas’s claim in these proceedings is that O’Neill by putting three coloured stripes down the arms and legs of the shorts, jerseys and tracksuits which it manufactures and sells has been passing off these products as the products of Adidas. The claim is confined to the use of this three-striped design in the manner indicated. No suggestion has been made that Adidas’s name or trademarks have been used or that any other form of representation has been made. It is, therefore, a claim for passing off based exclusively on the alleged imitation of the general appearance or “get up” of Adidas products so as to confuse and mislead the public. A claim for passing off so based is rare.

  57. It is true that a difference in names will often be enough to warn the public that they are getting one trader’s goods, and not anothers. In general, there will not be a passing off by “get up” alone, unless the resemblance between the goods is so close that it can hardly have occurred except by deliberate imitation. In Fisons v Godwin [1976] R.P.C. 653, the High Court of Australia held that it will be difficult to establish a risk of confusion and thus succeed in a claim of passing off where a brand name appears on the competing packaging that is significantly different from that of the plaintiff. In Burford v Mowling (1908) 8 C.L.R. 212 the High Court of Australia held that the defendants were entitled to sell their soap in boxes which were the same size shape material and colour to the boxes in which the plaintiff sold their soap as there was sufficient difference in name. In Parkdale Pty Ltd v Buxu Pty Ltd (1982) 149 C.L.R. 191 Gibbs C.J. stressed the importance of the use of the difference in brand name to distinguish goods of similar appearance. In Red Bull GmbH v Mean Fiddler [2004] E.W.H.C. 991 Lewison J. refused to grant an interlocutory injunction against the defendant which sold an energy drink as a substitute for the plaintiff’s product even though he thought there was a striking similarity in the design of the two cans because the brand names Red Bull and Sinergy were prominent in each of the cans and the defendant gave certain undertakings in relation to “switch selling”.

  58. But these are examples where the distinction in products was clear. Here, the get up, the manner in which the goods are displayed and the nature of the purchasing transaction involved are essential. The old authorities are not always helpful in the modern age of supermarkets, where as the evidence showed, a consumer will be guided by transient perceptions, and even an ordinary careful consumer may engage only in a momentary examination of a product, perfectly or imperfectly presented. This is what the trial judge found.

  59. The question of the similarity between the get up of two products is, to a substantial measure, a matter of first impression (see An Bord Trachtála v Waterford Foods plc (Unreported, High Court, Keane J., 25th November, 1992); United Biscuits UK Ltd v ASDA Stores Ltd [1997] R.P.C. 513). A court of appeal may also make its own judgment on this point. The trial judge relied on that test. He pointed out that consumers will not always direct their attention in a careful way in their purchasing of wholemeal bread products. There was actual evidence that the presence of brand name on the package had not eliminated the risk of confusion in the eyes of such ordinary consumers.

  60. It is true that the colours red and yellow appear on the top part of the Brennan wholemeal bread package but the judge found these can become obscured. There was evidence that confusion had been caused. The judge rejected Brennan’s point that supermarket consumers might engage in intermediate scrutiny in favour of his view of the risk of confusion. In these circumstances therefore I am of the view that this case is distinguishable from Adidas. The nature of the product and the nature of the purchasing transaction are quite different.

    (c) Damage to Goodwill or Reputation

  61. As identified by Lord Oliver in Reckitt and Coleman, the third element which must be proved in order to establish passing off is damage. It is necessary for a claimant to establish it is likely to suffer damage to its goodwill by reason of the erroneous belief engendered by a defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff. Brennan say that McCambridge failed to establish that it suffered any damage. But the learned trial judge stated in this regard at para. 23:

    As for the third test the likelihood of damage to the plaintiff, it is appropriate in the instant case to view the case as more in the nature of a quia timet action as far as damages are concerned given the recent introduction by the defendant of its new packaging. I heard some evidence of losses said to result from the introduction of this new packaging, but there could easily be, on the evidence, other reasons for any losses which have been alleged by the plaintiff. I am satisfied that should the plaintiff succeed in satisfying the second test then it would be reasonable and correct to grant an injunction, even though the plaintiff may have fallen short in being able at this stage to establish actual loss resulting. If there be actionable confusion it is reasonable to conclude that this in all likelihood will result in customers purchasing the defendant’s product in error, believing that he or she has purchased that of the plaintiff. Losses therefore are an inevitable foreseeable consequence.

  62. A claimant must prove that its reputation is such that a defendant’s activity is likely to cause the public to believe that a defendant is providing a product made by the claimant thus causing damage to the claimant’s property in the goodwill of the business.

  63. The actual evidence here in fact showed that McCambridge had actually sustained some loss of trade by reason of persons who intended to buy McCambridge bread actually purchasing Brennan’s product. The loss was not notional. Passing off does not even require an actual or potential diversion of business from a plaintiff to a defendant. What is necessary to show, by inference or evidence, is damage to the claimant’s goodwill. The tort is complete when the reputation is damaged (see Polycell Products at p. 36 and 37). It was open to the judge both to act on the evidence before him and to infer damage. I do not think the judge erred in law in this.

    Conclusion

  64. I conclude that the three tests identified have been satisfied. That being so, it follows that the judge was correct in his decision. I would uphold the judgment of the learned High Court judge therefore. As a consequence, the appeal must fail.

    Justice Fennelly

  65. I have the misfortune to disagree with the majority. I differ with the comprehensive and meticulous judgment which is about to be delivered by MacMenamin J essentially in its conclusion on what he says at the outset is the essential question before this Court on the appeal, namely whether the learned trial judge erred in applying agreed principles to the facts of the case. I gratefully adopt the history of the facts of the case and of the proceedings to date and I can be brief.

  66. MacMenamin J refers to the restatement of the three-stage test for establishing the tort of passing off set out in the speech of Lord Oliver in Reckitt & Coleman Products Ltd v Borden Inc. [1990] 1 W.L.R. 491 at page 499. The second of the criteria is the most directly relevant for the purposes of the present appeal. That criterion is that the plaintiff “must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.” It is not enough for the plaintiff to show that there is a risk of confusion between the products of the defendant and his products. It is necessary that the defendant be shown to have imitated the “get-up” of the plaintiff’s product to such an extent that he is deceiving consumers into buying it as if it were that of the plaintiff. That is because, under the first leg of the test, the plaintiff has to show that “the get up [of his goods] is recognised by the public as distinctive specifically of the plaintiff's goods or services.”

  67. It is essential also to identify the test to be applied by the court in determining that the defendant, by the “get-up” of his product, has deceived or is likely to deceive consumers into believing that the product he is selling is that of the plaintiff. Peart J expressed the matter as follows:

    In conducting the present exercise the Court must put itself in the shoes of the reasonably prudent shopper, who is not in any particular hurry and who neither is overly scrupulous and dilatory, and who enters the shop with the wish to purchase a loaf of McCambridge wholewheat bread. Is such a purchaser reasonably likely, because of the similarity in the get-up of the Brennans product to the McCambridge product, to exit the shop with the Brennans loaf, having intended to purchase the McCambridge loaf?

  68. I agree with MacMenamin J that this is the correct formulation of the test and that it involves, as he points out at paragraph 36 of his judgment, excluding from consideration the “utterly careless purchaser.”

  69. I bear in mind that the complaint of the respondent in this case is that it alleges that the appellant made certain changes in the packaging of its wholemeal bread so as to make it confusingly similar to that of the respondent.

  70. The learned trial judge described the respondent’s packaging as follows:

    In 2008, McCambridge had changed its packaging so that thenceforth it was sold in a plastic re-sealable bag with distinctive graphic elements thereon such as a sheaf of wheat and the McCambridge name, as well as distinctive colouring, the most significant being a dark green panel, appearing on the front of the bag.

  71. As MacMenamin J describes it, there is embossed on the package “a centrally positioned printed block, predominantly green in colour, but containing overhanging text in fancy script, comprising the words “John McCambridge.”

  72. The distinctive elements of the respondent’s packaging are, therefore, on the front of the pack. The respondent’s complaints about the appellant’s packaging are summarised in written submissions as follows:

    1. The size, shape and overall layout of the packaging;

    2. The colouring (and in particular the predominant use of a shade of green which is virtually identical to that used in the McCambridge Packaging);

    3. White on green writing;

    4. The use of an off-yellow colour panel;

    5. Deployment of a stylised signature in a similar font;

    6. Script overhanging against the main green panel;

    7. The overall colour schemes which are confusingly similar;

    8. The depiction of a head of wheat on the JBB Packaging which is reminiscent of the sepia photograph of ingredients appearing on the McCambridge Packaging; and

    9. The shadow effect behind the signature of both “Joe Brennan” and the word “Wholewheat” on the JBB Packaging.

  73. The court assesses similarity of “get-up” by reference to the combined effect of the elements. All the elements need to be considered. The first thing to note about the list of elements of comparison proposed by the respondent is that it omits the fact that there appears on the front of the appellant’s package the quite distinctive yellow colour with red lettering representing the logo of the appellant. This is the traditional distinguishing feature which appears on all the appellant’s products. As I think is implied by the judgment of the learned trial judge, a consumer who looked at this labelling at all would not be confused into thinking he was buying the respondent’s loaf.

  74. I will also comment briefly on the other items in the list. I do not think there can be any complaint about the overall shape and size of the package. It is generic. The shade of green is central to the complaint and is said to be confusingly similar to that of the respondent. Accepting that, it cannot be viewed in isolation and indeed cannot be seen without simultaneously seeing the distinctive appellant’s logo. The white on green writing was on the appellant’s former packaging and seems in no way distinctive. I can see no confusingly similar “off-yellow colour panel.” The stylised signature in a similar font refers to the respondent’s label. The similar font appears on the appellant’s package in the word, “Wholewheat.” These different words certainly appear in overhanging form. It is not possible to consider that overall colour scheme, without taking into account the appellant’s logo which is quite dissimilar. The head of wheat referred to appears in a photograph in the respondent’s package but as independent decorative design on that of the appellant. The shadow effect behind the signature of “Joe Brennan” and “Wholewheat” are features of that type of script.

  75. Clearly the points made by the respondent are legitimate elements in carrying out the exercise of comparison. However, it is the overall effect that matters in the end. That effect has to be considered in the context of the sale of the competing products. The plaintiff is not entitled to select some only of the constituent elements in the packaging and ignore others. This point is illustrated by the decision of the House of Lords in Schweppes v Gibbens (1905) 22 RPC 601. In that case, Lord Lindley said:

    It appears to me that the real answer to the appellants’ case is this – that they invite your Lordships to look, not at the whole get-up, but at that part of the get-up which suits their case. The resemblances here are obvious enough, but, unfortunately for the appellants, so are the differences. The differences are not concealed; they are quite as conspicuous as the resemblances. If you look at the whole get-up, and not only at the part of it which the resemblances are to be found, the whole get-up does not deceive.

  76. The learned trial judge expressed his central findings in a small number of key paragraphs, 28, 29 and 30 of his judgment. I agree with MacMenamin J that these passages should be fully quoted. The learned judge made the following findings:

    28.

    In the present case I am satisfied that the competing loaves of bread are presented to the public in shops and supermarkets for the most part on open shelves of varying designs at or near eye level. Some of those shelves are flat, but some are sloped upwards at angles of varying degrees. On occasion these loaves are presented upright on a shelf. But there has been evidence also to the effect that throughout the day loaves may get tossed around on the shelf, even though when first placed there they were placed in an orderly and tidy way. Therefore any distinguishing features appearing on the front panel, though visible when the product is in an upright position, may not be so easily seen later in the day when they may be disturbed from that upright position, and be lying flat.

    29.

    The result is that even a reasonably careful and observant customer may not read or notice in particular the front panel of the package until it is in his or her hand, because only the end or side of the package is visible on the shelf. For the average shopper, therefore, the competing brand name and indeed the distinctive red and yellow brand colours on the Brennans product or other distinguishing features may not be readily and clearly visible when the product is on the shelf. Each product looks almost identical from that angle and vantage point, being of the same general shape and size.

  77. It seems to me that this analysis of the circumstances of the sale could not lead to a conclusion that the appellant’s label is the cause of confusion in the consumer’s mind, for the simple reason that the consumer under consideration is assumed not even to have seen the front panel of the package, though that panel itself is the focus of the complaint. In the sales situation envisaged, “each product looks almost identical.” But the reason he gives for that is that the products are “of the same general shape and size,” not that the packaging on the appellant’s loaf is misleadingly similar to that of the respondent. Significantly, the learned trial judge went on to consider the position once the labelling could be seen as follows:

    30.

    There is little doubt, however, that if the same customer was to look at and examine the product when in the hand, or indeed again when it is in the shopping basket or trolley, or indeed later again at the check out area, the brand name and distinctive brand colouring of the Brennans product would be observed, and any such customer who wanted the McCambridge product would be able to return the Brennans product to the shelf and replace it with the McCambridge loaf if it was available on the shelf. However, I have heard evidence from a small number of customers called by the defendant, some of whom have stated that it was not until they got home that they noticed that they had purchased the Brennans product rather than the McCambridge loaf which they had intended to purchase. I do not doubt the sincerity of the evidence which those witnesses have given.

  78. The learned judge proceeded further to elucidate his reasoning in the following paragraph:

    31.

    As I have said, bread, including these loaves, is purchased regularly by customers, and it is not something to which typically much time will be devoted. Bread will be picked off the shelf quite quickly and placed in the basket or trolley without too much, if any, careful scrutiny. That is not the behaviour of a careless or indifferent shopper. It is in my view the normal and reasonable behaviour of the average shopper. This is something which must be borne in mind when considering the likelihood of confusion between the packaging of the Brennans product and that of McCambridge. For this reason, the Court must have regard to the first impression of the product on the customer when it is on the shelf, and to attach less importance to the later opportunities which the customer may have to notice that the wrong product has been placed in the basket or trolley before leaving the shop.

  79. The judge is undoubtedly correct to concentrate on the customer in the often rushed and confusing circumstances of the supermarket, typically a person who takes the product off the shelf “quite quickly and place[s it] in the basket or trolley without too much, if any, careful scrutiny.” When one adds that the learned judge has already assumed that this person “may not read or notice in particular the front panel of the package until it is in his or her hand ....,” it is impossible to see how that panel has caused him to believe anything about the product.

  80. Yet again, the learned judge explained how he had come to his conclusion at paragraph 34:

    I am concerned with the overall appearance on a first impression, and in particular that appearance as it is viewed by the average and reasonably observant customer when viewed from his or her vantage point on the shop shelf, and in the circumstances in which the product is purchased as outlined already.

  81. In my view, the learned trial judge considered the case as one of mere confusion. This becomes clear from a passage at paragraph 36, where he said that it “would take more care and attention than I believe it is reasonable to attribute to the average shopper for him or her not to avoid confusion between the two packages when observed on the shelf, especially when these are placed adjacently or even proximately so.” He did not describe how the act of alleged passing off by the appellant causes the confusion which he identifies.

  82. In my view, this sets the bar too low. It departs from the essence of the analysis. Firstly, no trader, other than by use of a registered trade mark, has a monopoly in the use of any particular shape or size of product or in any particular label, colour or word or combination of words. He may achieve that result perhaps indirectly by showing that any such element has become distinctive in connection with his products. The essence of the tort of passing off is that no trader is to be allowed to sell his goods to the public in such a way as to deceive consumers into believing that they are those of his competitor. It is important to remember that, in an environment of free competition, traders are allowed, even encouraged, to vie with each other for the custom of consumers. It is only where one trader is shown to have so behaved as to lead those consumers to believe that the goods he is selling are those of the competitor that the tort of passing-off is committed. In my view, the analysis deployed by the learned trial judge would permit a finding of passing off to be made merely on a sufficient showing of confusion without the essential element of imitation of the specific quasi-proprietary interest of the plaintiff in the get-up of his own goods. I would approve the statement of Lord Scarman in Cadbury Schweppes v Pub Squash [1981] 1 W.L.R. 193 at 200, which was approved by O’Higgins C.J. delivering the judgment for the majority of this Court in Adidas v O’Neill [1983] I.L.R.M. 112 at 121:

    And the test is whether the product has derived from the advertising a distinctive character which the market recognises. But competition must remain free: and competition is safeguarded by the necessity for a plaintiff to prove that he has built up an "intangible property right" in the advertised descriptions of his product: or, in other words, that he has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant, however, does no wrong by entering a market created by another and there competing with its creator. The line may be difficult to draw: but unless it is drawn, competition will be stifled.

  83. For these reasons, I would have allowed the appeal and dismissed the respondent’s claim.

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