Reckitt and Colman Products Ltd v Borden Inc & Ors

The case concerns a quia timet action for passing off brought by the long-established seller of lemon juice marketed in a plastic squeeze container shaped, coloured and sized like a natural lemon (Jif). The House of Lords summarised the three classic elements of passing off: (i) a goodwill or reputation in the get-up, (ii) a misrepresentation by the defendant likely to cause the public to believe the defendant's goods are the plaintiff's, and (iii) actual or probable damage to the plaintiff's goodwill.

The trial judge found, and the House of Lords accepted, that the respondents had acquired a secondary meaning in the natural-size lemon-shaped container — many consumers identified that container, independent of its label, specifically with Jif — and that ordinary shopping conditions meant purchasers often did not read detachable labels. Given these unchallenged findings of fact, use by the appellants of any of their three proposed get-ups would amount to a representation likely to deceive a substantial number of purchasers and to cause damage; accordingly the injunction granted below was upheld. The House emphasised that the law protects against deceptive appropriation of a rival's get-up and that prevention of deceit does not create an unlawful monopoly where the essential element is misrepresentation to consumers.

Background and parties: The respondents (trading as Colman's/Jif) had for many decades marketed preserved lemon juice in a plastic squeeze container of natural lemon colour, size and shape. The appellants (Borden and subsidiaries) sought to enter the United Kingdom market with lemon juice in very similar natural-size lemon-shaped squeeze containers (three designs: Mark I, Mark II and Mark III) bearing labels identifying ReaLemon. The respondents brought quia timet passing off actions seeking injunctions to restrain the appellants from marketing in containers so nearly resembling the Jif lemon as to be likely to deceive.

Procedural history: After interlocutory proceedings and undertakings, Walton J. tried the actions (reported [1987] F.S.R. 303) and granted permanent injunctions, finding that the proposed use would constitute passing off; the Court of Appeal ([1988] F.S.R. 601) affirmed (the trial finding of fraud was reversed and not pursued). The appellants appealed to the House of Lords.

Issues before the House:

• Whether the respondents' get-up (natural-size lemon-shaped container with detachable neck-label and faint embossing) had acquired a distinctive association in the minds of a substantial number of purchasers specifically with Jif lemon juice;
• whether the appellants' proposed get-ups would amount to a representation that their product was Jif;
• whether, on the balance of probabilities, significant numbers of purchasers would be misled and the respondents would suffer damage.

Court’s reasoning and outcome: The House accepted the lower courts' detailed factual findings that many shoppers, in ordinary supermarket conditions, relied on the lemon-shaped container itself and paid little or no attention to detachable labels; that Jif had been, for many years, effectively the only supplier of natural-size lemon squeeze packs in the UK; and that a substantial body of shoppers exhibited brand loyalty to Jif. Given those unchallenged findings, the appellants had not taken adequate and effective steps to distinguish their get-up sufficiently to avoid misrepresentation. The Lords analysed and rejected the appellants' legal arguments that (i) no one can acquire a protected interest in the shape of a container because that would confer a monopoly in goods or containers, (ii) the so-called 'monopoly assumption' rendered the respondents’ evidence invalid, and (iii) a shape indicative of contents cannot acquire secondary meaning. The House held that protection against passing off is protection of goodwill and will extend to get-up (including container shape) where that get-up has acquired distinctiveness and the defendant’s adoption would cause deception. The appeal was dismissed and the injunction upheld.

Additional points: The House expressed reluctance to confer de jure monopolies but emphasised that the injunction did not create a new monopoly in containers per se; it prevented the appellants from deceiving consumers by adopting a get-up the public associated with the respondents.

Appeal dismissed. The House of Lords upheld the injunctions because the respondents had proved (on unchallenged findings of fact) that the lemon-shaped natural-size squeeze pack had acquired distinctiveness identifying Jif, that the appellants' proposed get-ups would be likely to lead many shoppers to believe they were buying Jif, and that the respondents would probably suffer damage; labels were insufficient in ordinary shopping conditions to prevent deception.

Trial: Walton J., permanent injunctions granted (reported [1987] F.S.R. 303). Court of Appeal: appeal dismissed (reported [1988] F.S.R. 601). House of Lords: appeal dismissed ([1990] UKHL 12).