Cadbury Ltd & Anor v Effem Foods Ltd
High Court of New Zealand
Rodney Hansen J
11 April, 5 May 2003
Passing off - misleading and deceptive conduct - s9 Fair Trading Act 1986 (NZ) - plaintiff’s claim to an exclusive reputation in colour purple for chocolate - defendant released a range of Harry Potter chocolate in colour purple - application for further particulars specifying (inter alia) the exact colour purple relied on and historical details of sales of products in purple packaging - R108 High Court Rules
Facts:
The plaintiff, Cadbury, claimed that since 1930 it had manufactured and sold in New Zealand a range of chocolate products in purple or predominantly purple packaging. As a result it alleged that the public associated purple exclusively with its chocolate products.
In November 2002 the defendant released a new range of Harry Potter chocolates in packaging using purple as the dominant colour. Cadbury sued, alleging that the defendant had deliberately selected a shade of purple in order to lead consumers to believe that Harry Potter products were associated with Cadbury or were of the same nature and quality as Cadbury products. Cadbury alleged four causes of action - two of passing off and two of breach of the Fair Trading Act 1986. The first passing off cause of action relied on the defendant’s use of a closely resembling shade of purple to that used by Cadbury. The second passing off claim relied on features of the get up of the Cadbury chocolate including purple and the colours gold and white. The third and fourth causes of action under the Fair Trading Act, relied, respectively, on the defendant’s use of purple and the use of purple in association with other distinctive features of Cadbury’s get up.
The defendant sought extensive particulars:
(a) Cadbury’s amended statement of claim attached a swatch showing three colours of purple - namely a central shade and then two slight variations in colour which might occur on some imported product. The defendant argued that Cadbury should be required to define with precision the shades of colour it sought to protect, by reference to an accepted colour standard such as the Pantone standard;
(b) The defendant requested Cadbury to provide historical information (reduced at the hearing to just the last ten years) showing the name and nature of each product, the periods of sale in New Zealand, sales by value annually, the shades of purple used by reference to a colour matching system and the periods during which each such shade was used in New Zealand.
Other particulars of advertising and promotion were sought.
Held (refusing the application):
(1) Cadbury’s use of a colour swatch attached to its statement of claim clearly stated the case which the defendant was being required to meet. For the purposes of the pleadings, there was no reason why in principle Cadbury could not expand the colour range covered by its pleadings by an allegation relating to a “substantially similar colour”. There was no legal requirement that the claimed monopoly be defined in “black and white” terms. It was sufficient that terminology was adopted that permitted a finding to be made at trial and gave the defendant clear notice of what the plaintiff claimed [paras 18 and 19].
Price Waterhouse v Vortex Group Limited (CA 179/98, 30 November 1998, Court of Appeal unreported) referred to.
(2) The historical particulars sought went far beyond what the defendant was entitled to by way of particulars and amounted to evidence. Much of it would be disclosed before trial in discovery or in briefs of evidence. The particulars sought did not serve any of the recognised objectives of further particulars and would be oppressive [paras 28 and 29].
Comité Interprofessional du Vin de Champagne & Anor v Wineworths Group Limited (unreported High Court, Wellington, CP 672/87, 15 March 1990, McGechan J) distinguished.
(3) Particulars of the allegation that the defendant had deliberately imitated Cadbury’s colours were refused, since application following discovery would be more appropriate [paras 33 and 34].
(4) Particulars would not be ordered of the difference in damages between loss of distinctiveness and loss of value of goodwill. It might be that there was no material difference but it was not the function of particulars to resolve that question.
Counsel
J G Miles QC, D A Laurenson and B Sullivan for the defendant (the applicant for particulars)
D A R Williams QC and C L Elliott for plaintiffs (the respondents)
Reported by:
Andrew Brown QC