Supporting Documents:

30-2019 Galway Free Range Eggs Ltd v O'Brien & Hillsbrook Eggs Ltd AFL Web.pdf 030-2019 Resp Notice.web.pdf

THE SUPREME COURT

DETERMINATION

BETWEEN

RESULT: The Court does not grant leave to the Defendants to appeal to this Court from the Court of Appeal

REASONS GIVEN:

ORDER SOUGHT TO BE APPEALED

COURT: Court of Appeal

DATE OF JUDGMENT OR RULING: 22nd January, 2019

DATE OF ORDER: 31st January, 2019

DATE OF PERFECTION OF ORDER: 31st January, 2019

THE APPLICATION FOR LEAVE TO APPEAL WAS MADE ON 20th February, 2019 AND WAS IN TIME.

General Considerations

1. The jurisdiction of the Supreme Court to hear appeals is set out in the Constitution. As is clear from the terms of Article 34.5.3° thereof and the many determinations made by this Court since the enactment of the Thirty-third Amendment, it is necessary, in order for this Court to grant leave to appeal from a decision of the Court of Appeal, that it be established by the applicant that the decision sought to be appealed involves a matter of general public importance, or that it is otherwise necessary in the interests of justice that there be an appeal to this Court.

2. The general principles applied by this Court in determining whether to grant or refuse leave to appeal having regard to the criteria incorporated into the Constitution as a result of the 33rd Amendment have now been considered in a large number of determinations and are fully addressed in both a determination issued by a panel consisting of all of the members of this Court in B.S. v Director of Public Prosecutions [2017] IESCDET 134 and in a unanimous judgment of a full Court delivered by O’Donnell J. in Price Waterhouse Coopers (A Firm) v Quinn Insurance Ltd. (Under Administration) [2017] IESC 73. The additional criteria required to be met in order that a so-called ‘leapfrog appeal’ direct from the High Court to this Court can be permitted were addressed by a full panel of the Court in Wansboro v Director of Public Prosecutions [2017] IESCDET 115. Accordingly, it is unnecessary to revisit the new constitutional architecture for the purpose of this determination.

3. It should be noted that any ruling in a determination is a decision particular to that application and is final and conclusive only as far as the parties are concerned. The issue calling for the Court’s consideration is whether the facts and legal issues meet the constitutional criteria as above identified. It will not, save in the rarest of circumstances, be appropriate to rely on a refusal of leave as having a precedential value relative to the substantive issues, if and when such issues should further arise in a different case. Where leave is granted on any issue, that matter will be disposed of in due course in the substantive decision of the Court.

4. The application for leave filed, and the respondent’s notice thereto, are published along with this determination (subject only to any redaction required by law) and it is therefore unnecessary to set out the position of the parties in detail.

Background

5. In these proceedings the plaintiff sought an order restraining the defendants from passing off their goods as the goods of the plaintiff. The plaintiff sells eggs under the name “Galway Free Range Eggs”, and the focus of its complaint was that the defendants were selling their eggs under the name “O’Briens of Galway Free Range Eggs.”

6. The trial judge (O’Connor J.) refused the relief sought (see [2016] IEHC 249). He found inter alia that the use of the word “Galway” was the key issue, since egg producers were obliged by EU and domestic regulations to label their boxes with the words “free range eggs” where that was applicable. Further, there was no evidence of any damage to the plaintiff’s sales, reputation or goodwill.

7. The plaintiff succeeded on appeal. The Court of Appeal found inter alia that the trial judge had erred in relation to the importance of the marketing regulations, since they did not require the words in question to be included in the brand name and did not justify the infringement or appropriation of the plaintiff’s goodwill. On the question of damage, the Court ruled that the plaintiff was not obliged to show actual damage but was entitled to an injunction to protect its reputation and goodwill in its brand name on a quia timet basis as it had established that the defendants’ acts constituted the tort of passing off.

The application for leave

8. The notices filed by the parties are available on this website and will not be summarised here in any great detail.

9. The applicants assert that the judgment of the Court of Appeal gave primacy to national law, where it should have disapplied such law. It is contended that EU law on the marketing of eggs grants “a form of protected speech” to the words “free range eggs”, and that national law relating to brand names and passing off must therefore be adapted to give effect to the primacy of EU law.

10. The measure referred to here is Commission Regulation (EC) 589/2008, which lays down the rules for the implementation of Council Regulation (EC) 1234/2007 as regards marketing standards for eggs.

11. The respondents maintain that the marketing regulations have nothing to do with brand names.

Decision

12. The applicants have not referred to any specific part of the regulations relied upon. The only relevant provision in Regulation (EC) 589/2008, so far as this Court can see, is Article 12(2). This provides that packs containing Class A eggs shall bear on the outer surface “in easily visible and clearly legible type” the farming method by which the eggs were produced. The farming method (for the purposes of this case) must be identified by reference to the terms used in Annexes I and II.

13. The applicants have not engaged with the gravamen of the finding of the Court of Appeal to the effect that this regulation has nothing to do with brand names. No legal analysis has been put forward to support the proposition that the obligation to mark the box with (in this case) the words “free range eggs” creates “a form of protected speech” relating to those words that has somehow displaced the legal principles relating to the protection of brand names.

14. The Court therefore refuses to grant leave to appeal.

And it is hereby so ordered accordingly.