by David Phelan , David Smith May-16-2019 in Commercial & Business, Dispute Resolution & Litigation

The Court of Appeal earlier this year re-examined the tort of “passing off” in the case of Galway Free Range Eggs Limited (“Appellant”) v O’Brien & Ors (“Respondents”) [2019] IECA 8 where it overturned the High Court’s 2016 decision and granted the Appellant an order which restrained the Respondents’ from passing off their own goods as goods of the Appellant.

High Court decision

In the High Court case, Galway Free Range Eggs Limited had sought an injunction preventing Hillsbrook Eggs Limited, a rival business from selling their eggs under the name of “O’Briens of Galway Free Range Eggs”. Galway Free Range Eggs claimed that Hillsbrook Eggs Limited had committed the tort of “passing off” as there was likely to be confusion caused amongst the public concerning their eggs and those of the Defendants.

In the High Court, Mr Justice O’Connor applied the three part test that was established by Mr Justice Clarke in Jacob Fruitfield Limited v United Biscuits UK Limited [2007] IEHC 368 which was more recently upheld in the Supreme Court decision in McCambridge Ltd v Joseph Brennan Bakeries [2012] IESC 46. The three part test is as follows:-

  1. The existence of a reputation or goodwill in the claimants’ 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 claimants’ product; and
  3. Whether damage to the claimants’ goodwill or reputation by virtue of any such confusion has been established.

Mr Justice O’Connor ruled in favour of the Defendants’ and found that Galway Free Range Eggs had failed to establish that the Defendants’ use of the name “O’Brien” and the geographic name of the egg’s county of origin was of a manner that did not accord with honest practices and constituted the tort of “passing off”.

Court of Appeal decision

Earlier this year, the Court of Appeal overturned the High Court’s decision and found that Galway Free Range Eggs Limited were entitled to an injunction preventing the Respondents from passing off their produce and from trading under the name of “O’Briens of Galway Free Range Eggs”.

The Appellant argued that the three part test in Jacob Fruitfield had not been correctly applied by Mr Justice O’Connor in the High Court case.

Ms Justice Costello held that the Appellant had already established that it had a reputation or goodwill in its brand name. Ms Justice Costello stated that it was clear that the Appellant had established a significant reputation in its brand name in respect of its products in Galway and the West of Ireland and therefore it was clear that the first limb of the triple test had been satisfied and the trial judge had erred in his original finding. The Court of Appeal also found that the second and third limbs of the three part test had not been applied correctly in the High Court.

The Court of Appeal ruled that the Appellant was not required to show that it had suffered actual damage in order to succeed in its claim for passing off and it was entitled to an injunction to protect is reputation and goodwill in its brand name on a quia timet basis as it had established that the acts of the Respondents constituted the tort of passing off.

The Court of Appeal also held that the High Court had erred in its dismissal of survey evidence. The Court of Appeal reiterated that the current law in this jurisdiction is that survey evidence is admissible in passing off claims to prove the opinions of members of the public on matters as to reputation or the likelihood of confusion.

Finally, the Court of Appeal acknowledged that EU and domestic regulations required the Respondents to label their egg cartons “free range eggs” but it did not require them to include the description in their brand name. Therefore, the regulatory obligation could not justify the inclusion of the words “free range eggs” in their brand name if it would result in passing off their goods as those of the appellant.

The Court of Appeal’s decision once again reaffirmed the three part test established in Jacob Fruitfield as the appropriate test to be applied when assessing claims for “passing off” in Ireland. Ms Justice Costello is clear in her judgment that any deviance from this three part test will not be accepted. This decision serves as a useful reminder that when considering a claim for “passing off” in Ireland, it is evident that the starting point must be to determine whether the Plaintiff has already established reputation and goodwill in their brand name and that survey evidence can be a helpful tool in doing so.


For further information please contact David Phelan at Hayes solicitors.

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