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High Court of Ireland Decisions
You are here: BAILII >> Databases >> High Court of Ireland Decisions >> Joh A. Benckiser GmbH & Anor v. IFI Irish Food Ingredients Ltd. [1988] IEHC 15 (13 May 1988)
URL: http://www.bailii.org/ie/cases/IEHC/1988/15.html
Cite as: [1988] IEHC 15
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THE HIGH COURT
1988 No.2395P
BETWEEN
JOH. A. BENCKISER GmbH AND FIBRISOL SERVICE LIMITED
Plaintiffs
AND
IFI IRISH FOOD INGREDIENTS LIMITED
Defendant
DELIVERED BY THE HONOURABLE MR JUSTICE DECLAN COSTELLO ON 13TH MAY 1988
The first-named Plaintiff Company and its predecessors are German companies who manufacture and market chemical products for the meat industry. The second-named Plaintiff Company is an English company and is a licensee of the first-named Plaintiff for the marketing of the first-named Plaintiff's products in the UK and Ireland.
The Plaintiffs' goods which are marketed in this country are sold under registered trade marks, one of which is "Fibrisol" and the other "Fibricure". The first-named Plaintiff is the registered proprietor of "Fibricure" and the assignee of "Fibrisol". The second-named Plaintiff is the registered user of "Fibrisol". The second-named Plaintiff has been using these marks in this country since 1972, "Fibrisol" since that time and "Fibricure" since 1982.
The Defendant Company is a company registered in this country. It was recently established as a result of an amalgamation of two other companies engaged in the trade in which the Defendant Company now trades. One of the predecessor companies of the Defendant had for a number of years been agents marketing the goods of the Plaintiffs in this country, and after the Defendant Company was formed in 1985 it continued to act as agents for the marketing in this country of the Plaintiffs' products. However, the commercial relationship between the parties ceased at the end of 1987 and from the beginning of this year the Defendant Company commenced to market the same products which the Plaintiffs market and adopted two trade marks which are not yet registered, one called "Ifisol" and the other called "Ificure".
The claim by the Plaintiffs in these proceedings is that the Defendant Company by the use of these marks has infringed the Plaintiffs' registered trade marks. They have a second claim and this is based upon the claim that there has been a passing off by the Defendant Company of its goods as the Plaintiffs' goods because of the similarity of the get-up of a bag used by the Defendant Company to that of a bag used by the Plaintiffs, namely, a large white bag which the Plaintiffs use with their trade mark printed in red on it. There is a third item of claim, namely, an infringement by the Defendant Company of the registered trade marks in advertisements which the Defendant Company placed in a trade journal called "Irish Master Butcher" . I am satisfied that the insertion of the Plaintiffs' trade marks by the Defendant Company in this trade journal was due to inadvertence. This has not been contested on the Plaintiffs' behalf. It seems that no order would be required in relation to this aspect of the case in that the error has been rectified and so I can put aside that aspect of the case for the purposes of this judgment.
I turn now to the Plaintiffs' claim of infringement. By virtue of section 12 of the Trade Marks Act 1963 what the Plaintiffs have to establish is that the use by the Defendant Company of the trade marks which it is now using is likely to deceive or, cause confusion. In considering this claim the court of trial, and this court on this interlocutory application, must consider the look and sound of the two marks; must consider the goods on which they are used; must consider the nature and kind of customers who will be involved in purchasing the goods, and all the surrounding circumstances of the case.
It seems to me that the following are the relevant considerations: Firstly, the Plaintiffs use "Fibrisol" as a house mark for a range of products. The customer does not order a product by the name "Fibrisol" but will order it under a different name or designation, for example, "V10" or "414V" and not by the trade mark alone. Secondly, there are no sales either by the Plaintiffs or by the Defendant Compan; to the general public. This trade is a highly specialised trade and is in respect of one limited area of the food industry, that is, to firms engaged in curing meat or otherwise processing meat by means of chemical products. The market in the goods to which these trade marks relate is a very limited one. There are, it would appear, about: 50 or 60 firms involved in it but the great majority of these are small firms and the great majority of the business in the goods to which the trade marks relate is with a small number of large firms. Finally, the products are not bought unseen; they are not ordered from warehouses, and the particular way in which sales take place is, I think, highly relevant. Sales are not conducted through retail outlets; they are not, as I have said, to ordinary members of the public. Orders are obtained both by the Plaintiffs and by the Defendant Company as a result of direct approaches by representatives of the respective firms and their agents to the manufacturers con cerned. It appears from the evidence of Mr Higgins (and this has not been denied by the Plaintiffs) that customers set up a production run to test the products which are being offered to them; that larger customers will have laboratory staff to test the products; that only when a customer is satisfied with the products does a purchase take place; that customers buy to particular specifications, and some customers carry out tests and require a certificate in compliance with the specifications. Thus it will be seen that the products that this action is concerned with are highly specialised ones. The trade is a highly specialised one and there is a very distinctive form of trade in the goods to which the trade marks relate. It seems to me that the customers of the goods to which the trade marks relate will know exactly the trade source of the goods as a result of the way in which. the contract between the parties arises in the way I have described.
In these circumstances I have come to the conclusion that the likelihood of deception or confusion as a result of the rival trade marks is extremely unlikely. I have come to this conclusion because, firstly, I think the visual and phonetic similarity of the marks is not very great, and, secondly, because the nature of the customers and the manner in which sales take place make any confusion or deception, in my view, a very remote possibility. I have indicated the conclusions which I have come to on the evidence before me.
It seems to me that this is not a case in which I should apply the tests laid down in Campus Oil [1983] I . R. 88, on which in normal cases the Court acts when deciding whether or not to grant an interlocutory injunction. This case is a case in which -it would appear there will be very little conflict of fact at the trial on the major issues which the trial judge will have to determine. I am in the same position as the trial judge will be in comparing the two marks; I am in the same position as the trial judge will be in relation to the evidence of the way the marks are used in the market in these goods. It seems to me that the court of trial is not going to be to any significant extent in a better position than this Court on this interlocutory application to decide the issues in the case. It was pointed out in the American Cyanamid case, which was approved of by the Supreme Court in the Campus Oil case, that there may be special factors on an application for interlocutory relief which would require the Court to consider the application for interlocutory relief on different principles to those which it enunciated as suitable for the general run of cases and which the Supreme Court has indicated should be applied in the general run of cases. But there are special circumstances in this case, namely, (1) the lack of conflict on material aspects of the facts in the case, and (2) the strength of the Plaintiffs' case as it appears from the affidavit evidence. And so I have come to the conclusion that I am entitled to conclude, in view of the conclusions which I have come to on the evidence before me, that the Plaintiffs have failed to establish any significant likelihood of confusion or deception if the rival marks in this case are traded side by side in the manner which I have described.
I turn now to the claim for passing off. I reach the same conclusions in relation to this part of the Plaintiffs' claim and I propose to refuse an interlocutory injunction in relation to this part of the claim. I think I am entitled to conclude that, on the balance of probabilities, the Defendant will be able to establish at the trial that there was, in fact, a printer's error on the bag which was used in relation to the sales of the Defendant's products. And I think I am entitled to conclude that a much darker green was intended for use and that such a darker green will, in fact, be used in the future. Printed in this way the Defendant Company's bag will make it perfectly clear that the goods in it are the Defendant Company's goods. I think that the likelihood of confusion or deception by the use of the bag which will be printed in red and green and which will prominently draw attention to the name of the proprietor of the goods, is extremely small. I reach this conclusion bearing in mind the particular circumstances of the trade and the particular specialised market to which I have already referred. I reach this conclusion also because I think it is highly likely that the Defendant Company will be able to establish that there was, in fact, no deliberate attempt to pass off its goods as the Plaintiffs' goods. This, I think, is established by the fact that the Plaintiffs' product "Fibrisol V10" is sold in a white paper pack with blue printing whereas the Defendant Company's rival product is sold in a completely different pack with the word "IFIFOS" on it and in a different colouring to that of the Plaintiffs' rival product.
For these reasons, and in the exercise of my discretion, it is proper for me to refuse an interlocutory injunction. I propose to reserve the costs. Should the action go for trial I think it is proper that another judge tries the case. He may take a different view of the evidence than I do.