A Galway company selling free-range eggs is entitled to a permanent injunction restraining a competitor from passing off their goods, the Court of Appeal has ruled.
The three-judge court on Tuesday overturned a 2016 High Court ruling that Galway Free Range Eggs Ltd was not entitled to orders against Hillsbrook Eggs Ltd and its directors, Kevin O’Brien and his daughter Carmel O’Brien.
It was claimed the defendants passed off their goods as the goods of the plaintiff by offering goods for sale under the name “O’Briens of Galway Free Range Eggs”.
Ms Justice Caroline Costello, sitting with Mr Justice Michael Peart and Mr Justice Brian McGovern, held that Galway Free Range Eggs is entitled to an injunction restraining the defendants trading under the name “O’Briens of Galway Free Range Eggs”.
Galway Free Range Eggs Ltd, of Craigmore, Claregalway had sought various orders restraining the defendants from continuing to packaging their eggs under the name “O’Brien’s of Galway Free Range Eggs”.
The defendants had denied the claims and had opposed the action.
It was claimed, from 2012 on, the defendants, of Barnaderg in Tuam, Co Galway, began packing their own eggs and selling them as “O’Briens of Galway Free Range Eggs”.
The plaintiffs were not happy with this, because of the use of the terminology “Galway Free Range Eggs” on the defendant’s packaging.
First ruling
In his 2016 judgment Mr Justice Tony O’Connor found that Galway Free Range Eggs had failed to establish the defendants used the O’Brien name and the geographic name of the egg’s county of origin in a manner that did not accord with honest practices.
The judge considered consumer survey evidence tendered by the parties was limited. He found the plaintiff had failed to establish misrepresentation leading to confusion between the parties’ respective egg boxes.
The plaintiff appealed that decision on grounds including that the High Court had failed to rule on whether or not the plaintiff had established the existence of a reputation or goodwill for its product and in particular its brand name.
Other grounds of appeal included that the High Court did not address the issue of the similarity if brand names, erred in his approach to survey evidence adduced by both parties and misconstrued EU regulations that require egg sellers to mark their products as either free-range, barn eggs or eggs from caged hens.
Appeal judgment
Giving the appeal court’s judgment, Ms Justice Costello said Galway Free Range Eggs, having established the defendants had committed the wrongful act of passing off, was entitled to an injunction to protect its reputation and goodwill in its brand name.
She said the plaintiff had established a substantial reputation in its brand name Galway Free Range Eggs in respect of its products in Galway and the west of Ireland.
The EU regulations compelled the defendants to label their egg cartons as free range, but 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.
Complying with their obligations under the regulations did not entitle the defendants to appropriate the goodwill of the appellant in its brand name or business, the court said,
The High Court had erred in dismissing survey evidence, she also held.
