Passing off occurs when a claimant’s right to goodwill, brand, business name and reputation is interfered with by a third party, either intentionally or unintentionally. When hearing an action in relation to passing off, the Courts generally place themselves in the shoes of a reasonable consumer and consider the likelihood that such a person would have been misled by the conduct of the interfering third party.
Although passing off cases have been relatively rare in Irish courts, there is settled case-law which has established the position with the Galway Free Range Eggs Limited v O’Brien & Ors clarifying the law on passing off in Ireland.
In this case, the “triple test”, initially established in Jacob Fruitfield Limited v United Biscuits UK Limited was reaffirmed, requiring proof of:
- Goodwill – The claimant’s product must have an established reputation.
- Misrepresentation – The defendant’s branding must create a likelihood of confusion.
- Damage – Proof of actual harm is not necessary; likelihood of confusion is sufficient.
Initially, the High Court ruled against the plaintiff, doubting the survey evidence and finding no misrepresentation. However, the Court of Appeal overturned the decision, granting an injunction against the defendants for using a confusingly similar brand name, even though they had not deliberately caused confusion.
The ruling reinforced the importance of survey evidence in passing off claims and clarified that EU marketing regulations do not override the need to protect goodwill in branding.
In the UK, the case of Reckitt & Colman v. Borden (1990) (the “Jif Lemon case“) established the classic trinity test, which was later adopted in Irish Courts. Reckitt & Colman successfully argued that Borden’s lemon-shaped container for lemon juice misled consumers into thinking it was Jif lemon juice, leading to an injunction against Borden.
Unlike trademark infringement which relies on registered trade mark rights, passing off demands, amongst other proofs market survey evidence, to prove goodwill. Jif Lemon was not registered as a trademark because its lemon shape was directly associated with lemon juice, making it ineligible for trademark protection.
For more information please contact Bernard King.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
