The Supreme Court has dismissed Joseph Brennan Bakeries’ appeal against a High Court finding that its wholemeal bread packaging passed off the product as McCambridge Limited’s. The Court upheld the injunction restraining Brennan from manufacturing, distributing or selling the bread in packaging confusingly similar to McCambridge’s through its colouring, layout, text positioning or other features.
The judgment, delivered by MacMenamin J. on 31 July 2012, concerned Brennan’s redesigned packaging introduced from January 2011. McCambridge had sold its wholewheat bread in a resealable bag since 1998. The High Court found that Brennan’s new presentation was likely to lead ordinary shoppers to take its loaf by mistake when intending to buy McCambridge’s.
Brennan argued on appeal that the resemblance rested on generic features, including the size and shape of the packaging, resealable plastic and the colour green. The Supreme Court accepted that the package’s size, shape and green colour were generic, and that McCambridge could not claim a monopoly over them. But it said those elements had to be considered alongside other features, including white writing on green, an off-yellow panel, stylised and overhanging script, a wheat image and the overall colour combination. Taken together, the Court said, the features formed a protectable get-up and went beyond mere resemblance.
Brennan also argued that its brand name and red and yellow colours distinguished the product. The Court said the High Court was entitled to rely on evidence about how bread is displayed and bought in supermarkets. Products may be moved or lie flat, obscuring distinguishing features; shoppers may make quick choices without closely inspecting each loaf. The High Court had heard from 11 witnesses who said they bought Brennan bread believing it was McCambridge’s, as well as expert evidence about consumer behaviour. The Supreme Court said proof of actual confusion was not essential, though such evidence could add weight to a claim.
The Court found no error in the High Court’s application of the passing-off test: goodwill, misrepresentation likely to cause confusion, and damage to goodwill. The High Court had treated the damages aspect largely as a quia timet claim in light of the new packaging, while also hearing evidence of some lost trade. The Supreme Court concluded that the three elements were satisfied and upheld the High Court judgment. It did not make a new damages award in the appeal.