Passing Off-Court of Appeal Confirms Test in Galway Free Range Eggs Case

When it comes the economic tort of  passing off there is an accepted 3 part test which a Plaintiff needs to pass in order to win an intellectual property case involving passing off.

The test is as follows: you must prove

  1. Goodwill or reputation in a product
  2. Misrepresentation by someone which may lead to confusion between one product and another in the minds of the public
  3. Damage to the goodwill or reputation as a consequence of the misrepresentation.

This test was approved by the Supreme Court in McCambridge Limited v Joseph Brennan Bakeries and prior to this in Jacob Fruitfield Limited v United Biscuits (UK) limited.

Galway Free Range Eggs

This test was reviewed again in a case involving free range eggs in Galway.

Galway Free Range Eggs Limited had gone to the High Court for an injunction preventing a competitor, Hillsbrook Eggs Limited,  from selling their eggs under the name of “O’Briens of Galway Free Range Eggs”.

Galway Free Range Eggs Limited claimed passing off by Kevin O’Brien, Carmel O’Brien and Hillsbrook Eggs Limited as they claimed there was likely to be confusion in the minds of the public concerning their eggs and those of the Defendants. The High Court had refused the application for an injunction. Galway Free Range Eggs Limited appealed to the Court of Appeal.

Background

Galway Free Range Eggs Limited were unhappy when the defendants began selling their eggs as “O’Briens of Galway Free Range Eggs”.

The High Court had held that the Plaintiff had failed to prove misrepresentation leading to confusion by the defendants and found consumer survey evidence to this effect of limited value.

Court of Appeal

The Court of Appeal held that Galway Free Range Eggs Limited had established that the defendants had engaged in passing off and were entitled to an injunction to protect its good name and reputation. The Court also held that the High Court had erred in dismissing the survey evidence and EU regulations which obliged the defendants to label their eggs as free range did not mean they had to include the words “free-range eggs” in their brand name.

Applying the 3 part test

1. Goodwill/reputation

The Court of Appeal accepted that Galway Free Range Eggs Limited had established goodwill in the use of the word “Galway” in connection with the words “free range eggs”.

2.  Confusion

The Court held that the appropriate test to be applied was whether the public were likely to be victims of confusion arising from the Defendants use of the words “Galway free range eggs” in its packaging and found that the High Court had erred in failing to apply this “confusion” test once it found that the Plaintiff had failed to find misrepresentation leading to confusion.

The Court of Appeal also held that the High Court should have had regard for the survey evidence adduced by the Plaintiff and that it was permissible to admit survey evidence; it was then a matter for the Court as to how much weight was given to that evidence.

The survey evidence showed that there was confusion amongst the 29% of the population and that this was sufficient to establish confusion and fulfill the 2nd part of the test. The Court of Appeal also found it was not necessary to put particular members of the public into evidence to give evidence about confusion and survey evidence could be relied upon.

3. Damage

The Court of Appeal held that it was not necessary to show that the Plaintiff had actually suffered damage but it was the appropriation of goodwill which was sufficient to establish damage for the purposes of the 3rd part of the test and to obtain the remedy-an injunction-sought.
You can read the full Court of Appeal decision in Galway Free Range Eggs Ltd v Kevin O’Brien, Carmel O’Brien and Hillsbrook Eggs Limited here.

What Is Intellectual Property and Why Should Your Small Business Care?

intellectual property law

You might have heard the phrase “intellectual property” bandied about.

And you might have thought: “well, that doesn’t affect me-it’s only big companies that need to worry about that”.

Think again.

Intellectual property can, on occasion, be the greatest single asset that a company owns.

The growth of the value of intellectual property such as trade marks, copyright and domain names has led many savvy small business owners to look at their own business and its intellectual property.

Intellectual property, like any other form of property, can be bought and sold in a similar fashion.

What is intellectual property?

Intellectual property includes trade marks, copyright, passing off, counterfeit goods, confidential information and domain names.

There have been many high profile legal battles concerning intellectual property. A high profile battle in Ireland involved Sean Dunne, the property developer and the ownership of the D4Hotels domain name.

This involved a legal dispute between Dunne and a former manager as to who was entitled to ownership of the domain name.

It is understood that a significant sum of money was involved in the resolution and settlement of this dispute.

Karen Millen and Dunnes Stores

The fashion designer, Karen Millen, also brought legal proceedings against Dunnes Stores in relation to the unregistered design of garments that Dunnes were selling in their stores.

This was interesting from an intellectual property viewpoint as Karen Millen did not register a trade mark for the design in question. However the court recognised her rights in the unregistered trade mark.

McDonalds are another high profile company who guard their intellectual property rights jealously.

And it is equally important for small business in Ireland to do likewise as for some companies, the only significant asset that they own is their intellectual property right be it a trade name, a domain name or copyright in written material or photographs.

Domain names

It is important to note that whilst the registration of a domain name is a simple enough process, it is prudent for the owner of a domain name to also register the same name as a trade mark.

Because you can own a domain name but not own the trade mark for that same formation of words.

Intellectual property covers a wide spectrum of commercial activity. It may well be the case that your business has some valuable intellectual property which you may not recognise.

So take a look around your business at your trade name, business name, trade marks, copyright material, domain name(s) and see if you need to take steps to protect it.
By Terry Gorry
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