Reckitt and Colman Products Ltd v Borden Inc & Ors

Factual and Procedural Background

The Respondent has, since the mid-1950s, sold preserved lemon juice in plastic squeeze-packs moulded to the natural shape, size and colour of a lemon and marketed under the brand name “Jif.” After acquiring two earlier traders who had first introduced the idea, the Respondent became the sole significant supplier of lemon-shaped packs in the United Kingdom.

The Appellant, a North-American food company whose “ReaLemon” juice was already sold in bottles in the United Kingdom, decided in 1985–1986 to enter the lemon-shaped squeeze-pack market. It developed three versions of plastic lemons (referred to at trial as Mark I, Mark II and Mark III). Before any were released for public sale, the Respondent issued two quia timet passing-off actions. After a 22-day trial, Judge Walton granted a permanent injunction restraining the Appellant from marketing the three versions “or any container so nearly resembling the Respondent’s lemon-shaped container as to be likely to deceive without making it clear to the ultimate purchaser that it is not the goods of the Respondent.”

The Court of Appeal affirmed the injunction. The Appellant obtained leave to appeal to the House of Lords (now the Supreme Court). The House unanimously dismissed the appeal.

Legal Issues Presented

1. Whether the Respondent’s lemon-shaped container (taken with its ancillary labelling) had acquired goodwill such that it was distinctive of the Respondent’s goods in the minds of a substantial section of the purchasing public.
2. Whether the Appellant’s proposed Mark I, II or III containers constituted a misrepresentation likely to lead ordinary supermarket shoppers to believe that the Appellant’s product was the Respondent’s “Jif” juice.
3. Whether, on the facts, such misrepresentation would probably cause damage to the Respondent and accordingly justify permanent injunctive relief.

Arguments of the Parties

Appellant's Arguments

• The shape and size of a natural lemon are “common to the trade” and cannot be monopolised; protecting the Respondent’s container would confer an impermissible de facto monopoly in the sale of plastic lemons.
• No deception could arise because a careful shopper reading the prominent “ReaLemon” labels on the Mark II and Mark III packs would instantly know the source of the goods.
• Any confusion would stem solely from the Respondent’s historic monopoly (monopoly assumption) rather than from a misrepresentation by the Appellant.
• Descriptive or allusive shapes (such as a lemon for lemon juice) cannot acquire a protectable secondary meaning capable of sustaining a passing-off claim.

Respondent's Arguments

• Over decades of continuous sales, the lemon-shaped squeeze-pack has come to signify the Respondent’s “Jif” juice exclusively; housewives purchase by container-shape, not by reading detachable labels.
• The Appellant deliberately chose containers that reproduce the dominant, distinctive feature of the Respondent’s get-up and did not take sufficient steps to distinguish its goods.
• The law of passing-off protects goodwill, and if a container shape has become a badge of that goodwill it is part of the protectable get-up.
• Large-scale confusion—and consequent diversion of millions of sales—was probable on the trial judge’s findings; therefore injunctions were appropriate.

Table of Precedents Cited

Court's Reasoning and Analysis

All five Law Lords accepted the trial judge’s extensive factual findings, which were not challenged on appeal. Judge Walton had received survey evidence, in-store experiments and live testimony showing that supermarket shoppers rely almost exclusively on the lemon shape, seldom read detachable labels and automatically assume any natural-size plastic lemon to be a “Jif.”

The House applied the classic three-part test for passing-off:

1. Goodwill: Continuous use since 1956 and near-total market exclusivity had rendered the lemon-shaped squeeze pack distinctive of the Respondent’s goods.
2. Misrepresentation: By adopting containers virtually identical in size, shape and colour—and by failing to educate consumers through advertising or conspicuous branding—the Appellant’s proposed packs would lead ordinary shoppers to attribute the goods to the Respondent.
3. Damage: The judge’s unassailable finding that millions of sales would be diverted sufficed to demonstrate likely damage.

The House rejected the Appellant’s “no monopoly in goods” argument, holding that the action protects goodwill, not the physical container, and that the container can form part of the protectable get-up when it has acquired a secondary, source-identifying meaning. Statements in earlier cases about features “common to the trade” were inapplicable because, on the evidence, natural-size lemon-shaped packs were not in common UK use. Finally, the fact that careful, literate consumers could differentiate the labels was irrelevant: passing-off law guards the incautious public sold to in everyday supermarket conditions.

Holding and Implications

APPEAL DISMISSED. The injunction restraining the Appellant from marketing lemon-shaped squeeze-packs likely to deceive, unless clearly differentiated, remains in force.

Immediate consequence: the Respondent retains its exclusive ability to market lemon-sized plastic lemons for juice unless competitors adopt sufficiently distinctive get-ups. Broader impact: the decision affirms that, where a container’s shape has become a badge of origin, it can be protected through passing-off without conferring a statutory monopoly, and that courts will evaluate deception in the real-world circumstances of supermarket purchasing rather than by side-by-side comparison.