Trademark Case Brief- Reckitt & Colman v Borden

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Citation – [1990] 1 ALL E.R. 873 (House of Lords)

Facts: Reckitt and Colman Products Limited, the Plaintiff (hereinafter referred to as “P”), was a lemon juice manufacturer and sold it in yellow containers having an appearance similar to a natural lemon and having a removable cap at one end. The product was generally known as “Jif Lemon Juice” and attached to this container was a loose paper label of green colour with “Jif” and other statutory information written on it in yellow, held in place by the cap. P did not have any of its marks registered as Trademark (T.M.), but had a monopoly in selling lemon juice in such containers since more than 40 years in U.K.
Borden Inc., the Defendant (hereinafter referred to as “D”), started selling lemon juice with the name “ReaLemon” in containers similar to that of the Respondent (i.e. lemon shaped and colored). D produced three different versions of plastic lemon containers with minor changes in size, colour of the cap, and colour pattern of the labels. Owing to D starting to sell lemon juice in containers similar to that of P, P filed a suit for passing-off seeking to restrain D from selling.

Procedural History: 
P approached the Trial Court, which ruled in P’s favor. D approached the Court of Appeals, which also ruled in P’s favor. D has now approached the House of Lords.

Issues:
1)
Does the public associate lemon-shaped containers filled with lemon juice exclusively with P?
2) Does the get-up under which D propose to market their lemon juice amounts to a representation that the juice which they sell is “Jif” lemon juice?
3) If D is not restrained, will a substantial amount of public be misled into purchasing D’s lemon juice in the belief that it is the P’s “Jif” juice?

Holding: 
Yes, D’s selling of lemon juice in lemon shaped containers constituted passing-off. A permanent injunction was imposed on D from selling lemon juice in such containers.

Rationale:
The House of Lords applied the Three Part Test (Goodwill; Misrepresentation; Damage) to find out whether D was passing-off its product as that of P. Each issue was dealt with separately as explained below:
1) The House of Lords held that since P was the only player in the lemon-juice market who was selling it in lemon-shaped containers, and since P had been exclusively doing it for more than 40 years, such containers for lemon juice had become something people associate exclusively with P.
2) The House of Court held that since lemon-shaped containers were exclusively associated with P by the public, if D wanted to sell its product in similar containers, it should make sure that people will not confuse its products with that of P. The Court held that the change in color of label will not eliminate the confusion as the label is taken off once the product is bought and therefore, the product is unadorned for the most part it is in use with the customer. Therefore, an innocent customer will not remember how the label looked like when he/she goes to buy it again and will only remember the shape and the label us hardly paid any attention.
The court further held that a small change in the colour of the cap is not distinctive enough to alarm the customer that the product they are buying is not “Jif Lemon Juice”, therefore each of the get-ups proposed by D was just an immaterial variant of Jif Lemon and would amount to misrepresentation.
3) D contended that people will eventually figure out that P was no longer the only player in the lemon juice market with lemon-shaped containers and will start paying attention to the labels and colour of caps. The House of Lords did not accept this argument and held that the number of people who will be initially misled before realizing this could be huge and probably running into millions. Therefore if D is allowed to sell such products, it would cause a substantial harm to P.
Thus, since all the three parts of the three-part test are met, the House of Lords held that the Trial Court and the Court of Appeals was right in restraining D from selling lemon juice in containers similar to that of P.
Rule: Passing-off: This rule essentially means that no person is to sell his/her goods under the pretence that they are the goods of another person and applies in cases of unregistered trademarks.
Three-Part Test: The Courts have developed a three-part test to find out if an action constitutes as passing-off i.e. reputation and goodwill, misrepresentation, and damage. To establish a claim under passing-off, the Plaintiff must prove:
1) that his goods/services have acquired a particular goodwill or reputation in association with the “get-up” of the goods/services;
2) that the Defendant’s representation of his/her products is (or is likely to) mislead the people who wish to buy Plaintiff’s product into buying Defendant’s product/service.
3) that he/she will suffer damages if the Defendant is allowed to continue with such a representation.

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