Your Eggs Or Mine: Court Of Appeal Restates The Law On Passing Off

Overview

Although passing off cases are a rare phenomenon in Irish courts there have been times when businesses have sought the litigation route to stop a person or a business from passing off their goods or services. Passing off is where one business misrepresents or passes off their goods or services as if they were the goods or services of another1. More often than not, these type of cases settle on the steps of the court before proceeding to trial such as in the case of Tribune Newspapers plc v Associated Newspapers2. Perhaps the most notable Irish decision on passing off is the Supreme Court decision in McCambridge Limited v Joseph Brennan Bakeries3 where it was held that Brennan's were found to be passing off McCambridge's whole meal bread. Although cases do not always proceed to a full trial, passing off has become an established "litigation strategy"4 in Irish courts.

A recent Court of Appeal decision in the case of Galway Free Range Eggs Limited v Kevin O'Brien, Carmel O'Brien and Hillsbrook Eggs Limited5 is a rare but welcome clarification of the law on passing off in this jurisdiction.

Background

The plaintiff, Galway Free Range Eggs Limited, was successful in obtaining a permanent injunction restraining the defendants from passing off their goods as goods of the plaintiff. In short, the case involved the plaintiff objecting to the defendants trading under the name "O'Briens of Galway Free Range Eggs" in or about 2012 as the plaintiff had been trading under the name "Galway Free Range Eggs" since 1994. The argument put forward was that the defendants were branding and advertising their eggs with such a similar name to that of the plaintiff that consumers would mistakenly purchase the defendant's eggs and not those of the plaintiff.

The Triple Test

In order to be successful in a passing off action one must satisfy the passing off test otherwise known as the "triple test". Both the High Court and Court of Appeal referenced Jacob Fruitfield Limited v United Biscuits (UK) Limited6 in setting out this test. Firstly, a reputation or goodwill must exist in the claimants' product including, where appropriate, in a brand name or get-up. Secondly, a "misrepresentation" must occur leading to confusion between what is alleged to be the offending product and the claimants' product. The misrepresentation does not need to involve a deliberate act on the part of the alleged infringer. Finally, the court must ask whether the damage to the...