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
- Goodwill or reputation in a product
- Misrepresentation by someone which may lead to confusion between one product and another in the minds of the public
- 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.
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
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”.
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.
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.