Reckitt and Colman Products Ltd (t/a Colmans of Norwich) v Borden Inc. and Others

CourtHouse of Lords
JudgeLord Bridge of Harwich, Lord Brandon of Oakbrook, Lord Oliver of Aylmerton, Lord Goff of Chieveley, Lord Jauncey of Tullichettle
Judgment Date08 Feb 1990
JurisdictionEngland & Wales

[1990] UKHL J0208-1

House of Lords

Lord Bridge of Harwich

Lord Brandon of Oakbrook

Lord Oliver of Aylmerton

Lord Goff of Chieveley

Lord Jauncey of Tullichettle

Reckitt and Colman Products Limited (Trading as Colmans of Norwich)
(Original Respondents and Cross-Appellants)
and
Borden Inc. and Others
(Original Appellants and Cross-Respondents)
Lord Bridge of Harwich

My Lords,

1

When plastic containers made in the shape, colour and size of natural lemons first appeared on the market in the United Kingdom as squeeze packs containing preserved lemon juice the respondents were astute enough to realise their potential and to buy up the businesses of the two companies who first marketed preserved lemon juice in this way. They thereby acquired a de facto monopoly which, by the periodical threat or institution of passing off actions over the years, they have succeeded in preserving ever since. This is the first such action to come to trial.

2

The idea of selling preserved lemon juice in a plastic container designed to look as nearly as possible like the real thing is such a simple, obvious and inherently attractive way of marketing the product that it seems to me utterly repugnant to the law's philosophy with respect to commercial monopolies to permit any trader to acquire a de jure monopoly in the container as such. But, as Mr. Robin Jacob Q.C., for the respondents, quite rightly pointed out, the order made by the trial judge in this case does not confer any such de jure monopoly because the injunction restrains the appellants from marketing their product "in any container so nearly resembling the plaintiffs' Jif lemon-shaped containter as to be likely to deceive without making it clear to the ultimate purchaser that it is not of the goods of the plaintiff." [Emphasis added.] How then are the appellants, if they wish to sell their product in plastic containers of the shape, colour and size of natural lemons, to ensure that the buyer is not deceived? The answer, one would suppose, is by attaching a suitably distinctive label to the container. Yet here is the paradox: the trial judge found that a buyer reading the labels proposed to be attached to the appellants' Mark I, II or III containers would know at once that they did not contain Jif lemon juice and would not be deceived; but he also enjoined the appellants from selling their product in those containers because he found, to put it shortly, that housewives buying plastic lemons in supermarkets do not read the labels but assume that whatever they buy must be Jif. The result seems to be to give the respondents a de facto monopoly of the container as such which is just as effective as de jure monopoly. A trader selling plastic lemon juice would never be permitted to register a lemon as his trade mark, but the respondents have achieved the result indirectly that a container designed to look like a real lemon is to be treated, per se, as distinctive of their goods.

3

If I could find a way of avoiding this result, I would. But the difficulty is that the trial judge's findings of fact, however surprising they may seem, are not open to challenge. Given those findings, I am constrained by the reasoning in the speeches of my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle to accept that the judge's conclusion cannot be faulted in law.

4

With undisguised reluctance I agree with my noble and learned friends that the appeal should be dismissed.

Lord Brandon of Oakbrook

My Lords,

5

I have had the advantage of reading in draft the speeches prepared by my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle. I agree with both speeches and for the reasons given in them I would dismiss the appeal.

Lord Oliver of Aylmerton

My Lords,

6

The respondents to this appeal and their predecessors in business have for many years carried on business as manufacturers and suppliers of domestic and culinary products of various kinds, including preserved lemon juice. Shortly after the end of the Second World War such juice began to be sold in Italy in convenient plastic sqeeze packs coloured and shaped like lemons and in 1955 a company called Edward Hack Ltd. began to market juice in similar packs in the United Kingdom. Shortly thereafter another company, Coldcrops Ltd., entered the market with lemon juice sold in similar containers. Litigation ensued, Edward Hack Ltd. claiming that Coldcrops Ltd. were passing off lemon juice as and for their produce. That action never came to trial because both businesses were acquired by the respondent who thereafter marketed juice in plastic lemon containers of the Hack design under the brand name "Jif." Since 1956, the respondents, using the brand name Jif, have commanded the market in lemon juice sold in this way, though other traders have sold and do sell such juice in bottles (as do the respondents themselves) and in yellow squeeze packs of various shapes and sizes. From time to time, traders have attempted to penetrate the United Kingdom market with squeeze packs coloured and shaped like lemons but they have not, in general succeeded in establishing themselves in the market with any degree of permanence save in two cases.

7

Until the 1970s the position of the respondents as substantially the only supplier in the United Kingdom of lemon juice packaged in this way was virtually unchallenged but between 1972 and 1982 a number of traders attempted to break into the market. In most cases, the sales achieved were minimal relatively to the total potential market, but one or two managed to achieve sales which were not insubstantial. In the latter part of 1977, however, the respondents adopted a policy of bringing or threatening to bring proceedings for passing off against traders seeking to market lemon juice in this way. All claims were disposed of without trial with the result that, with two exceptions, the respondents were, up to the commencement of the present actions, save for relatively brief periods, the only suppliers of lemon juice in facsimile lemon squeeze packs in the United Kingdom. The two exceptions were and are Parrish and Fenn Ltd. and Brandway (Supercook) Ltd. both of whom entered into compromise agreements with the respondents under which they were enabled to continue to supply the market with lemon juice under the brand-names "Lazy Lemon" and "Supercook" in plastic squeeze containers of lemon shape but very much larger in size than the natural fruit size which is the characteristic of the respondents' product. These products have achieved substantial sales which, for the years 1985 and 1986, amounted to some 1.2 m. units per annum constituting roughly 2/3 by volume of the sales of Jif lemon. It was, however, clear from evidence given before Walton J. in the action from which the present appeal arise first, that the purchasing public has come to associate the natural-size lemon squeeze pack with the respondents' lemon juice sold under the brand name Jif and, secondly, that there is, in a substantial body of the purchasing public, a brand loyalty in the sense that these purchasers desire not just lemon juice but Jif lemon juice.

8

The original basic presentation of the respondents' squeeze pack has remained unaltered. It consists of the plasic container of lemon shape and colour comparable in size with a small natural lemon and having a removable yellow cap at one end covering a nozzle through which the contents is propelled by squeezing. The size of the container is apt to contain 55 ml. of liquid. On one side of the body of the lemon there is embossed the word Jif but this is not picked out in a different colour and it is not, as Walton J. observed, so prominent as readily to catch the eye of the casual shopper. The product is offered for sale with a loose paper label of triangular shape which slips over the nozzle and is held in position by the cap. This label is green in colour, bears the mark "Jif" in yellow lettering and contains such information as the "sell-by" date and other statutory information.

9

The first and second appellants are connected companies, the second appellant, which is incorporated in Belgium, being the European subsidiary of the first, which is incorporated in the United States. The third appellant, also incorporated in the United States, is the agency through which the second appellant carries on its European marketing operations. The first appellant does not in fact exercise any control over the management of its subsidiary and is not directly concerned with any of the relevant events but was quite properly joined in the proceedings as a result of representations by its solicitors that it was in fact involved in the actions of which the respondents were complaining. It remained in the proceedings without protest but taking no separate part and no substantive relief was granted against it. Its interest in the appeal therefore lies solely in the question of costs, but it may, for present purposes, be treated as one with the second appellant and it will be convenient for narrative purposes to refer to any two or more of the appellants as "the appellants" and to the first and second appellants as "Borden" without differentiating between them. In the United States Borden has for many years carried on business as a manufacturer of food products, including preserved lemon juice, which it markets under the brand-name "ReaLemon." Somewhat surprisingly to English eyes that name is a registered trade mark in the United States. ReaLemon juice is there marketed in plastic squeeze containers of lemon colour but of a shape which more nearly resembles the familiar Mills hand grenade.

10

Borden sells substantial quantities of juice in Europe, where it is normally marketed in bottles; and it was with bottled lemon juice that Borden first attempted to break into the United Kingdom market in...

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