Fifty shades of green

The colour green has many different connotations, amongst others being associated with emeralds, recycling and perhaps most famously the celebrations of St Patrick’s Day! A recent intellectual property case before the Court of Session in Edinburgh has however demonstrated that it can also be associated with a well known seafood shack in Oban.

This case was particularly unusual because (as far as this writer is aware) there have not been any previous reported cases on this point of law in Scotland, and perhaps only a few in the rest of the UK and in other jurisdictions.

The background

The case of Girl Norma Shellfish v Gordon MacGillivray t/a MacGillivray’s Seafoods concerned an action by the owners of a well known seafood shack in Oban. They raised proceedings against a local competitor based on passing off to protect the valuable goodwill which they had accrued in their branding as being associated with the colour green.

As readers will be aware, protecting brand rights and get up based principally on a particular colour is not without its challenges. This was demonstrated most recently by the difficulties Cadbury’s faced when trying to register a trade mark for the colour purple.

In this case, the pursuers had operated their famous seafood shack on Oban’s Railway Pier for around 25 years. Because of its distinctive green get-up, it was widely known amongst local customers and tourists as the Green Hut, the Green Shack or other similar names based on the colour green.

One of the pursuers’ competitors, Mr MacGillivray (the defender) had recently started trading using a “racing green” coloured kiosk located further up Railway Pier. The defender’s kiosk would be seen first by visitors looking for a “green shack” on Railway Pier and it was argued that this could cause and was already causing confusion between the two businesses. The pursuers raised proceedings against the defender on the grounds of passing off and sought an interim interdict to immediately prevent him trading using his green kiosk.

The court’s decision

Lord Pentland, one of the four appointed specialist intellectual property judges, ruled that the pursuers had set out a prima facie case of passing off. This was founded on Lord Oliver’s well known dicta in the Jif Lemon case, which held that individual features under which particular services are offered to the public, such as get-up, can be recognised by the public as being distinctive of a party’s services.

On the evidence before him, Lord Pentland accepted that the pursuers had made out a good case to the effect that they had accrued goodwill and a reputation in their business by association with their green coloured identifying getup. This was based, amongst other things, on Lonely Planet and TripAdvisor reviews, the latter where the pursuers were ranked as the number 1 restaurant in Oban.

The pursuers also demonstrated that the defender had made a misrepresentation (either innocently or deliberately, it did not matter) to the public that his MacGillivray’s Seafood business was that of the pursuers. Specific instances of confusion were put before the court and it was argued that further confusion was likely if the defender was permitted to continue trading from a green kiosk in that location.

As a result of establishing these two limbs of the passing off test, the pursuers successfully argued that that they had suffered and were likely to continue to suffer, inter alia, financial loss due to the confusion between their premises and those of the defender.

On this basis, Lord Pentland held that the pursuers had at least a reasonably strong prima facie case of passing off. Moreover the balance of convenience favoured the granting of the interim interdict, because the pursuers’ damages could not be quantified with any reasonable degree of accuracy. At the time of the hearing, the parties’ respective businesses were about to close down over the winter period, and Lord Pentland took the view that any loss of income in any event suffered by the defender as a result of the interim interdict being in place was not likely to be significant. With all that in mind, the interim interdict was granted in the pursuers’ favour.

Implications of the case

This case demonstrates that the law of passing off is a flexible and highly useful weapon in a brand owner’s armoury to prevent unauthorised use of its distinctive branding and get-up. The novel and relatively untested issues raised in this case also highlight that there is value in taking specialist intellectual property advice at the outset, where valuable methods of distinguishing the businesses and attracting custom are under threat of dilution. Commencing court action to gain at least some interim certainty is beneficial when the parties cannot otherwise resolve their dispute.