50 Shades of Green: the new prawnography?

Via Katfriends Mark Cruickshank and Gill Grassie (from the IP Dispute Resolution Team, Brodies LLP, located somewhere to the North of Hadrian's Wall but South of the Arctic Ocean) comes news of a bonny battle which has so far escaped the attention of other intellectual property blogs:

The Original Green Shack
"An fascinating passing off case came before the Scottish Court of Session at the end of last week when the owner of a local seafood bar and restaurant in Oban known as ‘the Original Green Shack’ (and other variations on this theme) went into battle seeking an interim interdict (injunction) against its rival MacGillivrays Seafood. Obtaining a registered trade mark for a specific colour is not without its challenges, as readers will know. The recent Cadbury v Nestlé battle over the colour purple [noted by the IPKat here] is just one high profile example of the difficulties that can be encountered. But the law of passing off is always there as an additional possible weapon -- and it was this body of law that came into its own in this Scottish case.

The pursuers (claimants) had traded from a green coloured shack or hut on Oban’s Railway Pier for around 25 years or so, selling quality fresh local seafood, and had successfully built up considerable good will in that trading get-up. It used the name ‘Local Shellfish – The Original Green Shack” but was also known by a variety of names such as the Green Shack, and the Green Hut. The claimants argued that they had become widely known under reference to the colour green via websites such as TripAdvisor, in guide books such as Lonely Planet (which praises its prawn sandwiches). A significant source of business for them was the tourist trade. A large proportion of these tourists would be first-time visitors who would be deliberately seeking out the claimants by reference to the green colour of their hut.

When the defender rival set up a seafood bar in a semi-portable unit on the pier, which was also coloured green, the pursuers were concerned about the confusion that was likely to be caused. This was not assisted by its rival’s position as it was closer to the shore: it would therefore be the first of the two businesses that visitors would espy when approaching the pier in search of the Green Shack. Indeed, the pursuers alleged that there had in fact already been considerable confusion and cited instances of this.

MacGillivrays: tried to mussel in ...
The defender’s position was that there was no arguable case of passing off as goodwill in the colour green as such was not established. Indeed, if any goodwill existed it was in a particular shade of bright green which differed from the ‘racing green’ shade that it used. Customers would not be confused as they would be looking for that shade of green. Further, argued the defender, the use of the colour green was a means of describing the pursuers' business as opposed to its actual known get-up. There could be no goodwill in the sense required for passing off to arise in what was a mere description. In addition, its unit was in a different location and was near the station as opposed to near the ferry terminal. It would be easy for the pursuers to specify the whereabouts of their shack to all-comers so that there could be no confusion. Finally, there were other differentiating features used by the defender -- such as its name, MacGillivrays Seafood. The defender challenged the examples of actual confusion which had been put forward by the pursuers and argued that there could in any event be no damage because it also ran a quality seafood business.

Ultimately the IP judge, Lord Pentland, decided after hearing arguments on both sides that there was an arguable case of passing off which was at least a reasonably strong one. Further, making it clear that the balance of convenience was affected by the court’s evaluation of the prima facie strengths of the parties’ respective positions, the judge decided that this balancing exercise favoured the granting of an interim interdict against the defender, who would effectively be forced to repaint his shack a different colour if he wanted to carry on trading.

The case was heard by the court within a matter of a few days of the application being made and took around two hours or so of court time. This is an example of the speed, efficiently and cost-efficacy that is available under the Scottish interim interdict procedure which can lead to a very swift decision and at least some interim certainty for parties who cannot otherwise resolve their dispute"