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You are here: BAILII >> Databases >> High Court of Ireland Decisions >> Yoplait Ireland Ltd v Nutrica Ireland Ltd (Approved) [2025] IEHC 301 (02 May 2025)
URL: http://www.bailii.org/ie/cases/IEHC/2025/2025IEHC301.html
Cite as: [2025] IEHC 301

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THE HIGH COURT

                                                                                                                         [2025] IEHC 301

                                                                                                                         [2025 No. 1908 P]

 

 

BETWEEN

 

YOPLAIT IRELAND LIMITED

 

                   PLAINTIFF

 

 

– AND –

 

 

 

NUTRICIA IRELAND LIMITED

 

                DEFENDANT

 

 

JUDGMENT of Mr Justice Max Barrett delivered on 2nd May 2025.

 

 

SUMMARY

 

In this judgment I indicate why I will grant an interlocutory injunction restraining Nutricia, its servants or agents, from passing off certain Nutricia/Danone Skyr products as those of Yoplait, including (without prejudice to the generality of the foregoing) by placing on the market in Ireland certain Skyr products that utilise a get-up which is confusingly similar to the get-up of certain of Yoplait's' products.

 

 

1.        By notice of motion of 10th April 2025, Yoplait has come seeking, inter alia:

 

'An interlocutory injunction restraining...[Nutricia], its servants or agents, from passing off its skyr products as those of [Yoplait]...including (without prejudice to the generality of the foregoing) by placing on the market in Ireland skyr products which utilise a get-up that is confusingly similar to the get-up of...[Yoplait's] products, as set forth in Schedule 1...'.

 

2.        By way of preliminary observation, I note the cautionary remark of Finlay Geoghegan J. in Contech Building Products Limited v. Walsh & Ors [2006] IEHC 45, at p.3, that 'In considering an application for an interlocutory injunction, this court has a rather limited function in relation to the disputes at issue', as well as the observation of Finlay C.J. in Westman Holdings Ltd v. McCormack [1992] 1 I.R. 151, pp.157-158 (as referred to by Laffoy J. in Miss World Ltd v. Miss Ireland Beauty Pageant Ltd [2004] 2 I.R. 394, para.5) that:

 

 'Having regard to the decision of this Court in Campus Oil [now to some extent overtaken by the Supreme Court's decision in Merck Sharp and Dohme v. Clonmel Healthcare [2020] 2 IR 1]...I am satisfied that once a conclusion is reached that the plaintiff seeking an interlocutory injunction has raised a fair question to be tried at the hearing of the action in which, if he succeeded, he would be entitled to a permanent injunction that the Court should not express any view on the strength of the contending submissions leading to the raising of such a fair and bona fide question, but should proceed to consider the other matters which then arise in relation to the granting of an interlocutory injunction.'

 

3.        Skyr is a traditional Icelandic dairy product. It is a highly strained, single ingredient (plus cultures) high-protein, low or no sugar, and no-fat product. Yoplait has been selling its Skyr products in Ireland under the Yoplait brand since September 2022. They are the best-selling Skyr products in Ireland. They have been extensively marketed in Ireland. Danone is the leading brand of yoghurts generally in Ireland.

 

4.        A corporate affiliate of Yoplait, Yoplait Marques, has filed two applications for two figurative/combined trade marks with the Irish Intellectual Property Office in respect of the get-up of Yoplait's Skyr products. These applications are currently pending.

 

5.        On 27th February 2025, the Danone group (of which Nutricia is part) launched a range of Skyr products in the United Kingdom with a get-up that Yoplait maintains is confusingly similar to Yoplait's Skyr products. Danone intends imminently to launch certain of its range of Skyr products in Ireland with what Yoplait maintains (in the words of Mr Burke, its managing director) is 'confusingly similar' (Affidavit, p.1) get-up.

 

6.        Mr Burke further avers (Grounding Affidavit, para. 17) that:

 

'17. I say and believe that the navy packaging and depiction of mountains are distinctive to [Yoplait Skyr] ...since they have been on the Irish market to the exclusion of... Danone Skyr...

 

...

 

23. Given that the Danone Skyr products have never been on the Irish market, I say and believe that consumers who are familiar with the Yoplait Skyr Products may mistakenly purchase the Danone Skyr Products, given the first impression of the products and because the average consumer would be one moving in a fast-purchasing environment and may not stop to properly compare products or recognise the different brand logos.'

 

7.        I am mindful that, for the purpose of this application, the allegations being made no longer apply to bottled Skyr.

 

8.        It is useful to provide a truncated chronology of events since 27th February last given the suggestion by Danone that Yoplait has been guilty of delay in bringing the within application. (As will be seen I do not see any delay to present, never mind delay that would be fatal to the granting of the interlocutory relief now sought). The truncated chronology (based on a more comprehensive chronology contained in the written submissions by counsel for Yoplait) is as follows:

 

27th February 2025            Danone launches Skyr products on the UK market with an allegedly similar get-up. The inclusion of an Irish address on the packaging indicates to Yoplait a likely intention to roll out the said products in Ireland also.

18th March 2025                Yoplait France writes to several Danone entities, including the defendant, concerning the get-up. A response is sought within eight days.

28th March 2025                Danone responds, denying confusing similarity and failing to identify a proposed launch date in Ireland.

2nd April 2025                    Browne Jacobson (solicitors for Yoplait) write to Danone detailing alleged passing off and seeking the intended launch date.

4th April 2025                    William Fry (solicitors for Danone) indicate that the intended launch will not take place before 4th May 2025.

6th April 2025                    Browne Jacobson writes to William Fry, noting the proposed launch date and indicating an intention to seek interlocutory relief absent certain requested undertakings.

9th April 2025                    William Fry gives a substantive response to the allegations being made and declines to provide the undertakings sought.

"                             Browne Jacobson indicates the intention to seek interlocutory relief and seeks identity of retailers whom it is intended will stock the Danone Skyr products in Ireland.

10th April 2025.                 The within proceedings are initiated and the notice of motion filed.

29th April 2025.                 Application for interlocutory relief heard.

2nd May 2025.                    This judgment issues.

 

 

9.        During the hearing, counsel for Nutricia handed up the following product containers for consideration:

 

1 x Danone (450g) Skyr container;

1 x Yoplait (450g) Skyr container ;

1 x Danone (800g) Skyr container; and

1        x Yoplait (850g) Skyr container.

 

10.    The two Yoplait containers are available already in Ireland. The two Danone containers are what it is proposed to launch in Ireland.

 

11.    The test for interlocutory injunctions was re-visited by the Supreme Court in Merck Sharp and Dohme v. Clonmel Healthcare [2020] 2 IR 1, [2019] IESC 65 There, O'Donnell J. emphasised the flexible nature of injunctions as a form of equitable relief. Conscious of 'the risk of perhaps creating a further rule that will require subsequent qualification and correction' (para.64), O'Donnell J. nonetheless helpfully identified (also at para.64) the steps that fall to be applied in a case such as that now presenting:

 

'(1)        First, the court should consider whether, if the plaintiff succeeded at the trial, a permanent injunction might be granted. If not, then it is extremely unlikely that an interlocutory injunction seeking the same relief pending the trial could be granted;

(2)          The court should then consider if it has been established that there is a fair question to be tried, which may also involve a consideration of whether the case will probably go to trial. In many cases, the straightforward application of the American Cyanimid and Campus Oil approach will yield the correct outcome. However, the qualification of that approach should be kept in mind.  Even then, if the claim is of a nature that could be tried, the court, in considering the balance of convenience or balance of justice, should do so with an awareness that cases may not go to trial, and that the presence or absence of an injunction may be a significant tactical benefit;

(3)          If there is a fair issue to be tried (and it probably will be tried), the court should consider how best the matter should be arranged pending the trial, which involves a consideration of the balance of convenience and the balance of justice;

(4)          The most important element in that balance is, in most cases, the question of adequacy of damages;

(5)          In commercial cases where breach of contract is claimed, courts should be robustly sceptical of a claim that damages are not an adequate remedy;

(6)          Nevertheless, difficulty in assessing damages may be a factor which can be taken account of and lead to the grant of an interlocutory injunction, particularly where the difficulty in calculation and assessment makes it more likely that any damages awarded will not be a precise and perfect remedy. In such cases, it may be just and convenient to grant an interlocutory injunction, even though damages are an available remedy at trial.

(7)          While the adequacy of damages is the most important component of any assessment of the balance of convenience or balance of justice, a number of other factors may come into play and may properly be considered and weighed in the balance in considering how matters are to be held most fairly pending a trial, and recognising the possibility that there may be no trial;

(8)          While a structured approach facilitates analysis and, if necessary, review, any application should be approached with a recognition of the essential flexibility of the remedy and the fundamental objective in seeking to minimise injustice, in circumstances where the legal rights of the parties have yet to be determined'.

 

12.    It is possible that a permanent injunction could be granted following the substantive hearing in these proceedings.

 

13.    Turning to the question of whether there is a fair question to be tried, I was referred to Jacob Fruitfield Ltd v. United Biscuits UK Limited [2007] IEHC 368. There, Clarke J. paraphrased as follows the three necessary proofs in a passing off claim (as identified in Reckitt & Coleman Ltd v. Bordan Inc. [1990] 1 WLR 491 and later approved by the Supreme Court in McCambridge Ltd v. Joseph Brennan Bakeries [2013] 1 ILRM 369, 377): (i) existence of a reputation or goodwill in the claimant's product, including, where appropriate, in a brand name or get-up, (ii) misrepresentation leading to confusion between what is alleged to be the offending product and the claimants' product, and (iii) whether damage to the claimant's goodwill or reputation by virtue of any such confusion has been established. These are three cumulative steps; all of them must be satisfied.

 

14.    In the paragraphs that follow, I consider the three just-mentioned necessary proofs and whether they have been established in the present case.

 

(i) Existence of reputation or goodwill in the claimant's product, including, where appropriate, in a brand name or get-up.

 

15.    I note that the reference is to reputation or goodwill. I adopt for the purposes of this judgment what remains the leading definition of goodwill in the United Kingdom and Ireland, viz., the definition offered by Lord Macnaghten in Inland Revenue Commissioners v. Muller & Co.'s Margarine Ltd [1901] AC 217, pp.223-224:

 

'What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates.'

 

16.    It seems to me that the question as to whether this limb of matters has been satisfied (and I consider that it has been satisfied) finds evidential support in the expert evidence of Professor McLoughlin, a Professor of Marketing at University College Dublin. He was engaged by Danone, inter alia, to provide expert evidence on the Irish dairy yoghurt market. In the course of his affidavit evidence, Professor McLoughlin states, inter alia, as  follows:

 

'41.   In consumer markets the typical recommendation for spending is a 60:40 split between brand-building efforts and sales-generating efforts....The activities undertaken by Yoplait in support of its Skyr product might be identified as follows (a) Brand Building: National Advertising, podcast sponsorship, national sponsorship, and influencer marketing, and (b) Sales Activation: In-store media/activations, online and in-store sampling.

42.     These activities have contributed to the creation of significant mental availability of Yoplait Skyr among consumers and potential consumers....

43.     Combined, the Yoplait Skyr range has created a mosaic of brand assets which amount to considerable brand equity. A new competitor entering the Skyr market must match these assets and marketing spend to create mental and physical availability for its own brand...'. [Emphasis added].

 

17.    Every profession has its own professional terminology and one can see traces of this in the above text. Nonetheless, it seems to me that what Professor McLoughlin is pointing to in the just-quoted observations is the establishment by Yoplait of the type of reputation or goodwill to which the first limb of the Reckitt & Coleman test refers.

 

18.    In short, for the reasons stated, I consider limb (i) of the Reckitt & Coleman test to be satisfied.

 

(ii) misrepresentation leading to confusion between what is alleged to be the offending product and the claimants' product,

 

19.    It is important to note what precisely is meant by 'misrepresentation' in this context. As MacMenamin J. observed in McCambridge, at para.33, it suffices that a defendant 'represents its goods in such a way that it is a reasonably foreseeable consequence that the claimant's business or goodwill will be damaged'. Proof of intention to deceive is not required; in An Post v. Irish Permanent plc [1995] 1 I.R. 140, p. 150, Kinlen J. addressing the issue of deception noted that

 

'As Barron J. said in Muckross Park Hotel Ltd. v. Randles [1995] 1 I.R. 130 at p. 135:  "The matter which has to be established is whether or not persons are likely to be deceived and it is not necessary that an actual instance of deception should be established in the case (see Worcester Royal Porcelain Co. Ltd. v. Locke & Co. Ltd. (1902) R.P.C. 479, at 489)."'

 

20.    I note Danone's contention (in the papers, though not in court) that the relevant consumer in this context is a person buying yoghurt in Europe. This seems to me to fly in the face of the evidence of Professor McLoughlin, to the effect that 'Breakfast has changed significantly as a meal occasion in recent years....Yoplait has invested significantly...in educating consumers and retailers about the merits of the category' (Affidavit, para.72), i.e., it has become a category in which some informed consumer discernment is now brought to bear. I note also in this regard the observation of Mr Barry, a director of Nutricia, referring to Nielsen market data which refers to the 'Skyr market share' (Affidavit, para.37) (albeit that this appears in a context where Mr Barry is denying that there is a separate sub-market of dairy yoghurts). To my mind, the relevant customer is a person buying Skyr yoghurt in a supermarket in Ireland.

 

21.    How are the products in issue likely to be viewed by a typical customer, (i) taking into account the typical way in which those products are likely to be presented to the public and the typical way in which the public is likely to make its decision concerning the purchase of the product concerned, without (ii) over emphasising the individual elements, particularly where (as I understand it to be common cause in this case) it is almost certain that the purchaser will not take the opportunity to engage in a detailed consideration of the different products? As follows:

 

(a)     the Danone product. This is a tall pot. It is very blue in colour. The blue is strikingly like the blue of the Yoplait product, even more so in real life than in the photographs presented to me. The other colour that presents is white. There is some sort of white mountain on the front. I am told it is actually an iceberg but it looks like a mountain. The name 'Danone' appears and has a stripe of red under it. The word 'SKYR' appears in blocky letters lower down. There is a narrow band of light blue near the top and a picture of a blue cartoon Viking, carrying a platter of white yoghurt. The 'squareish-with-curves' lid is again, very blue. The name 'Danone' with the red stripe, the word Skyr, and the cartoon Viking  again appear. But it is the blue that predominates. Again, the product is very blue with white as a secondary colour and the blue is very like the blue of the Yoplait product.

 

(ii)     the Yoplait product. This is a squat pot. It is very blue in colour. The blue is strikingly like the blue of the Danone product. The other colour that presents is white. There is a picture of some snowy mountains.  The word 'Skyr' appears in stylised, slender writing. The Yoplait logo appears above the mountains. There is what looks like a blade of green grass leaning in from the right. The lid makes the same first impression as the main body of the pot. With both the main body of the pot and the lid, it is the word 'Skyr' that jumps out, not the word 'Yoplait'. Again the product is very blue with white as a secondary colour and the blue is very like the blue of the Danone product.

 

22.    The presence of the Danone name on the Danone product is a matter to which I have given no little consideration. As MacMenamin J. observes in McCambridge, at paras.26-27:

 

'It will frequently be contended that the prominent display of a manufacturer's name is sufficient in order to distinguish the name of a product from that of a claimant....It is true that in many instances the presence of a trader's name will be sufficient to mark out a distinction. This will be particularly so if the lettering is sufficiently large or prominent; if it is well enough positioned in order to make clear the distinction to any consumer purchasing the product; if it is clearly visible in the place where the product is displayed at the time of sale. The positioning of the vendor's name may be important. Ultimately the test will be as to the overall impression on the observer created by the packaging.' [Emphasis added].

 

23.    The last line seems to me to be key here. It is the sheer blueness (with white as a background colour) that jumps out when one looks at the Yoplait and Danone containers that are in issue. When one sees them side by side in a supermarket fridge (and I have been shown several photographs of this type) this colour trait predominates. There is one photograph (at p.54 of the exhibits to the affidavit of Mr Markey) which seemed to me to be especially telling. It shows two shelves of yoghurt products, with the top shelf stacked with Yoplait and Danone products. The blueness of the competing Yoplait/Danone products is so pronounced that it is difficult to tell them apart in the picture, certainly in what Professor McLouglin's evidence suggests is the few seconds in which a customer chooses which product to buy (Affidavit, para.55).

 

24.    The same observations apply as regards the 450g/450g products and the 800g/850g products, the get up of the larger products being essentially the same, i.e. they are just larger versions of the smaller pots.

 

25.    It has been suggested that the Yoplait-Danone products are targeted at different market segments. There is some dispute between the parties as to the likely extent of any differential in pricing between the products. In his affidavit evidence (Affidavit No 2, p.18), Mr Burke, a director of Yoplait, notes that the Danone 480g product retails in Tesco (UK) for roughly €1.46, and its 800g product retails in Tesco (UK) for roughly €4.27. (Curiously, this suggests that buying a product with a volume that is 1.67 times greater in volume, one pays a price that is 2.9 times greater.) By contrast, in Ireland, Yoplait sells its 450g product for €2.39 and its 850g product for €2.99. Counsel for Danone brought me to certain till evidence which suggests that the Danone products, if sold in Ireland at their UK price, would actually retail at €2.75 for 480g (if available; in fact it is intended to launch a 450g product) and €3.89 for the 800g product. The parties seemed to me to be speaking at cross purposes in this regard, comparing 480g and 800g UK products with 450g and 850g Irish products, doing GB£ to € conversions and speculating what this would mean for a future Irish market on which both Yoplait and Danone Skyr products are available, unlike now. I am not persuaded that any of this evidence was especially informative or helpful or changes matters.

 

26.    When it came to the issue of confusion I was presented by Yoplait with survey evidence commissioned by it which suggests that customer confusion presents or will present. It is useful to consider briefly the case law on reliance on such evidence before turning to that evidence:

 

[1]     The results of market research surveys are admissible in applications of the within sort to prove facts such as reputation or likelihood of confusion. (Customglass Boats Ltd v. Salthouse Brothers Ltd [1976] R.P.C. 589, 595, as approved by the Supreme Court in Hanafin v. Minister for the Environment [1996] 2 IR 321).

[2]     In SmithKline Beecham plc v. Antigen Pharmaceuticals Ltd [1999] 2 ILRM 190, 197 McCracken J. stated that '[S]urvey evidence is of little or no evidentiary value in interlocutory applications, where that evidence is not tested by cross-examination, and indeed all the background facts relating to that evidence, such as the actual questionnaires and answers, are not put in evidence.'

[3]     In Jordan v. Minister for Children and Youth Affairs [2015] 4 IR 323, para.278, Clarke J. stated that the court can have regard to survey evidence if it can have a bearing on a factual decision that the court is required to make. He stated that any potential of the methodology or analysis adopted can be considered in addressing the survey evidence.

[4]     In Galway Free Range Eggs Ltd v. O'Brien and Ors [2019] IECA 8, the Court summarised the position presenting, as follows:

 

'45. It would appear that the law in this jurisdiction is as follows. Survey evidence is admissible in passing off claims to prove the opinions of members of the public on matters as to reputation or the likelihood of confusion. The weight to be attached to such evidence is a matter for the court. In assessing the weight of the evidence, the court should have regard to whether a relevant group was surveyed. So, if consumers were surveyed when the survey should have been of pharmacists, the court likely will attach little weight to the evidence derived from the survey. The reverse should also apply and greater weight should be given to surveys of the relevant group of people or businesses. An assessment of the adequacy of the methodology employed in the survey will be significant in weighting the value of the evidence adduced based on the survey. If there are weaknesses in the methodology, the results of the survey are unlikely to be accorded much weight. McCracken J's scepticism was expressed in the context of an application for an interlocutory injunction where the evidence could not be tested by cross examination. If, on the other hand, the evidence is so tested at plenary hearing and all other relevant evidence which the parties choose to adduce is led, then his sceptical comments are likely to be of little relevance to a decision on a plenary trial.'

 

27.    Danone complains that Yoplait's survey evidence was belatedly submitted in this case (four days before the hearing date) and that it did not have time to commission its own survey evidence. To some extent that is just the way of things when applications come on for hearing at speed. I do not see, nor was it suggested, that Yoplait was somehow behaving inappropriately in this regard. (In a not dissimilar vein, Yoplait, for its part, that noted  how the necessary speed at which the hearing came on meant that it did not have time to file an expert report to address the points made by Professor McLoughlin in the expert evidence that he furnished.)

 

28.    Danone also complains that 'the survey methodology is extremely lacking'. However, while attacking the methodology, it seemed to me never to engage properly with the problem that the survey results present for it. That problem lies in the fact that the Yoplait-Danone products appear similar to experienced, regular consumers. This lends weight to concerns that they could easily be confused.

 

29.     Danone complained that it is unusual that the same percentage of people considered a juxtaposed very blue Yoplait and Danone products to be virtually the same, yet also considered a juxtaposed very different Centra and Yoplait products to be virtually the same. Offhand, that does seem unusual and would have benefitted from explanation. Again, however, Danone seemed to me never to engage properly with the problem that the survey results present for it when it comes to the issue of confusion.

 

30.    I make a few additional points concerning the survey evidence, some of which have already been touched upon:

 

[1]     It is a survey conducted by Sentio, comparing a range of breakfast yogurts and Skyr on sale in Ireland. 

[2]     The survey was done with 702 people and it was considered to be statistically representative of the Irish consumer. 

[3]     It was done in a relatively short space of time, the 16th to the 22nd of April. I understand that the survey was commissioned and presented in very short time, it seems because of the speed at which this application came on for hearing.

[4]     As part of the survey  process, regular consumers of various brands, including Yoplait and other leading Irish yoghurt brands, were identified and segmented, in order to test for comparative trends between different types of consumer.

[5]     The way in which they were tested was to employ sliding scale and derive 'net sameness' scores from the results. The Yoplait & Danone Skyr products had the highest 'sameness rating', by a considerable margin:  over 20 percentage points higher than the next most similar pair.  This is a statistically significant difference, well outside the study's identified margin‑of‑error. 

[6]     Mr. Wright, the CEO of Sentio, has indicated that the questions were actually carefully designed not to be leading because they were trying to test consumer perception.  So the word 'similar' was considered to be non‑emotive and neutral (and, it seems, is routinely used in market research). 

[7]     The persons surveyed replied using a scale of one to seven.  (That sliding scale, Mr. Wright has explained, removes any bias.  So, instead of saying, e.g., 'Were you very confused?', 'Were you a little bit confused?', it simply requires use of  the sliding scale, with the person surveyed picking their number of choice. Mr. Wright has indicated that this is the longstanding way in which consumer surveys are dealt with and it is a way of clearing out what he calls 'statistical noise', i.e. it avoids findings driven by extremes and is designed to guard against arbitrariness. 

[8]     The survey's conclusions are succinctly stated. They indicate that (I) the survey demonstrates that, of the brands and products chosen, there is a significantly greater level of similarity between the Danone/Yoplait Skyr products in the eyes of consumers, both compared to other yoghurts as well as those specifically in the Skyr  category, (ii) while measuring 'confusion' is somewhat subjective - and could be considered leading, from a researcher's perspective - the notion of similarity or 'sameness' is intuitive and easily understood, (iii) the fact that the two products appear more similar to experienced, regular consumers lends weight to concerns that they could easily be confused between the two, (iv) further study could involve qualitative testing. 

 

31.    Counsel for Danone complained that the blue-potted Yoplait and Danone are competing in Belgium and that no evidence of confusion was proffered from that jurisdiction. However, I can only decide the case on what evidence is before me, not on what (allegedly better) evidence might have been placed before me.

 

32.    Counsel for Danone also complained that the Danone pot that featured in the survey is not the precise pot that will be released in Ireland. However, Yoplait did not know that the intention is to introduce a 450g pot in Ireland (as opposed to a 480g pot). Moreover, for what it is worth there does not seem to me to be much of a difference between the get-up of the Danone pot that was the subject of the survey and the 450g pot that was handed up to me in court.

 

33.    In the course of his judgment in Jacob Fruitfield, Clarke J. observes as follows, at para.2.12:

 

 'Counsel for United Biscuits places particular reliance on the judgment of the Supreme Court in  Adidas v. O'Neill [1983] ILRM 112 and in particular on the comments of O'Higgins C.J. at pp. 115-116 in which it is noted that a claim for passing off, based exclusively on get up, is rare.  O'Higgins C.J. quoted with approval a passage from the 10th ed. of Kerly's Law of Trademarks which does, it has to be said, note the possibility that imitation of get up alone may amount to passing off. However the passage goes on to assert that such cases are rare since trade names and word trade marks are normally present as a means of warning the public as to the distinction between the claimant's goods and the competing goods. In those circumstances, it is said, that the resemblances between the goods must be extremely close for a claim in passing off by get up alone to be maintained.' [Emphasis added].

 

34.    Rare cases do arise, albeit rarely. In this case it is the sheer blueness (with white as a background colour) that jumps out when one looks at the Yoplait and Danone containers that are in issue. Again, when one sees them side by side in a supermarket fridge (and I have been shown several photographs of this type) this colour trait predominates. As mentioned, there is one photograph (at p.54 of the exhibits to the affidavit of Mr Markey) which seemed to me to be especially telling. It shows two shelves of yogurt products, with the top shelf stacked with Yoplait and Danone products. The blueness of the competing Yoplait/Danone products is so pronounced that it is difficult to tell them apart in the picture, certainly in what the evidence suggests is the few seconds in which a customer chooses which product to buy. In this last regard, the time spent choosing a product, per Professor McLoughlin (Affidavit, para.55), is so short that one marvels at the ability of consumers to make any true distinction between products:

 

'[M]ost consumers regard grocery shopping as a burden they wish to conclude quickly....with nearly half of consumers spending less than five seconds choosing an item....One implication of this is that brands must have distinctive shopping assets to be seen on the shelf or online'.

 

35.    On a separate note, I recall that Clarke J. also observes as follows in Jacob Fruitfield, at para.2.14:

 

'I do not consider that either Fisons [Ltd v. E.J. Godwin Peat Industries Ltd [1976] R.P.C. 653] or Adidas establish any special rule to be applied in cases where brand or trade names are present. Those cases merely state the obvious. That in many, perhaps most, cases where there is a clear presence of a brand or trade name it is likely that purchasers will identify the differences in the product by reference to it. There may, however, be cases where, in all the circumstances of the case, and notwithstanding such a distinguishing feature, a risk of confusion nonetheless continues.' [Emphasis added].

 

36.    Again, in this case it is the sheer blueness (with white as a background) that jumps out when one looks at the Yoplait and Danone containers that are in issue. When one sees them side by side in a supermarket fridge (and I have been shown several photographs of this type) this colour trait predominates.

 

37.    In short, for the reasons stated and when I have regard to the entirety of the evidence before me, I consider limb (ii) of the Reckitt & Coleman test to be satisfied. I am buttressed in this conclusion when I have regard to the survey evidence proffered by Yoplait.

 

38.    In passing, this may be a useful juncture at which to note that I do not see that (i) the claimed standard usage of blue and white as a means of packaging yoghurt or Skyr yoghurt in Ireland (as asserted by Danone) or (ii) the fact that Danone's use of blue and white echoes its trademarked logo, or (iii) the blue and white on its intended packaging is a natural evolution of the colouring of its packaging colours in France, suffices to justify my refusing the interlocutory injunction sought and upsetting the status quo currently presenting pending a full hearing of these proceedings.

 

(iii) whether damage to the claimant's goodwill or reputation by virtue of the confusion referred to in step (ii) has been established.

 

39.    I note the observation of Laffoy J. in Miss World, at 404, relying on the judgment of Murphy J. in Falcon Travel Ltd v. Owners Abroad Group plc [1991] 1 I.R. 175, p.182, that '[I]t is the appropriation of goodwill which constitutes the damage necessary to sustain an action for passing off'. I note also, e.g., the observation of Finlay Geoghegan J. in Contech, at p.4, that there is a probability of loss if confusion arises for the purposes of an interlocutory application. Here, such damage and confusion aforesaid has been established on the evidence before me. I therefore conclude that the requisite damage for limb (iii) of the Reckitt & Coleman test has been satisfied.

 

40.    In the course of the proceedings, Danone contended that because Yoplait has not yet sued Danone in Belgium over the competing blue Yoplait-Danone products in that jurisdiction this shows that no damage has occurred to Yoplait's goodwill in Belgium and so, presumably, there would be no damage here. There are at least two problems with this proposition. First, the competition between Yoplait and Danone in the Skyr context is for products sold in a different manner (e.g., Yoplait sells in multipacks) to what is done in Ireland. Second, the fact that Yoplait has not sued in Belgium establishes nothing more than, for whatever reason, Yoplait has not sued in Belgium. It is a non sequitur to suggest that because Yoplait has not sued in Belgium, it necessarily follows that there has been no loss of goodwill on the part of Yoplait in Belgium.

 

41.    Returning to Merck and dealing with the various other factors to which I am required to have regard, as O'Donnell J. observes, at para.64:

 

'(2) The court should then consider if it has been established that there is a fair question to be tried, which may also involve a consideration of whether the case will probably go to trial. In many cases, the straightforward application of the American Cyanimid and Campus Oil approach will yield the correct outcome. However, the qualification of that approach should be kept in mind.  Even then, if the claim is of a nature that could be tried, the court, in considering the balance of convenience or balance of justice, should do so with an awareness that cases may not go to trial, and that the presence or absence of an injunction may be a significant tactical benefit'.

 

42.    I have already dealt with the 'fair question to be tried issue'. I do not see any reason on the evidence before me to suggest that this case will not go to trial. Viewed in one light the preservation of the status quo that the injunction will achieve is of tactical benefit to Yoplait. Nonetheless, it seems to me that for the reasons I set out hereafter the balance of convenience lies in preserving the existing status quo:

 

Property Rights

 

43.         Goodwill is a property right and falls to be protected as such. I am mindful in this regard of the observation of Clarke J. in AIB plc v. Diamond [2012] 3 I.R. 549, 589, that to decline to enforce the property right in goodwill on the basis that the party who has lost its property can be compensated in damages 'would amount to a form of implicit compulsory acquisition'. In Merck itself, the SPC as a property right was also weighed in the scales as a factor in deciding that the balance of convenience would have favoured the granting of an injunction in that case. The property right dimension of goodwill is not in and of itself a dispositive factor. Nonetheless it is an important factor in deciding (as I have decided) that the balance of convenience favours the granting of an interlocutory injunction in this case.

 

Adequacy of Damages

 

44.         The starting point in a case such as this is that damages are an inadequate remedy for a plaintiff. This is because of the recognised difficulty that presents in calculating damage to goodwill and reputation. It does not seem to me that Danone's proposed undertaking as regards tracking its sales, etc. (for some future reckoning of any, if any, damages payable) would meet the potential loss to Yoplait's goodwill and reputation. In Mitchelstown Cooperative Agricultural Society v. Goldenvale Food Products Ltd (Unreported. High Court, 12 December 1985) (at p.7) Costello J. observed that:

 

'[I]n most passing off actions damages are an inadequate remedy...I think that it is clear that the plaintiffs must suffer some disadvantage which could not be compensated for in damages if an injunction is now refused'.

 

That is precisely the problem that would present here if the interlocutory injunction were to be refused. I do not see that this situation is changed by the fact that Danone is keen to get its products to the market. As Clarke J. held in Jacob Fruitfield (at para.4.10) the cost of delay in coming to market is something readily calculable in damages. Nor is there reason on the evidence before me to conclude that delayed entry by Danone would negatively impinge on how its product performs when its product is eventually launched, if launched.

 

45.         There is suggestion from Danone that if, as a result of my decision in this interlocutory application, it elects to re-design its Skyr livery for Ireland, it would also having to re-design its Skyr livery in the United Kingdom to make such re-design commercially viable. Mr Barry avers in this regard (Affidavit, para 79) that:

 

'[E]conomies of scale do not permit separate packaging for the UK and Irish markets and there is no other English-speaking country in the EU with which we can share packaging if an injunction is granted.'

 

However, any costs presenting in this regard seem to me to offer an almost classic example of a situation in which the costs and hence any (if any) eventual damages payable in respect of those costs could be calculated readily. I do not see that it would damage Danone's relationships with its retailers were its Skyr products not to be rolled out imminently in circumstances where that 'failure' would be due to Danone's laudable and mandatory compliance with the interlocutory injunction that I intend now to issue.

 


Status Quo

 

46.         As is clear from, e.g., the outcome in Miss World, where an allegedly offending product has not come to the market, the balance of convenience favours the preservation of the status quo. As to what constitutes the  'status quo' in this context, as Finlay Geoghegan J. makes clear in Contech, at 6:

 

'[W]here a plaintiff moves speedily after learning of the commencement of selling of a product on a market, it appears to me that the status quo which the court must primarily have regard to is the position which prevailed before the commencement of the alleged wrongful acts, or the acts alleged to constitute the passing-off.'

 

47.         Here, that is the position now presenting where Yoplait is selling on the market using its blue livery and Danone is not selling on the market using its blue livery.

 

Commercial Risk

 

48.         As is clear from Aviareto Ltd v. Global Closing Room Ltd [2021] IEHC 377, para.61:

 

'[T]he extent to which the potential damage relied on to resist the grant of an injunction could have been avoided through the application of commercial common sense is a factor to which the court can, and...should, have regard in considering the balance of convenience'.

 

49.         However, I do not see that this is an especially significant factor in this case. The notable blueness of the Danone product is a consequence of what I understand to be a pan-European move to this type of blue in its products and which has hit a potential roadblock in this jurisdiction in the form of the issues that Yoplait now raises. I do not see on the evidence before me that Danone was somehow being commercially 'bullish' or blasé in this regard. If anything the stance it has adopted in these proceedings suggests that it adopted the stance it did because it considers there to be sufficient differentiation between the Yoplait and Danone products for no problem to arise from a passing off perspective. Whether or not it was right in this regard will only be known when the within proceedings move on to the substantive stage and the issues presenting are adjudicated upon.

 

Delay

 

50.         A plaintiff must move quickly to restrain a product which is alleged to involve passing off. A delay of some months was considered fatal in Irish Times Ltd v. Times Newspapers Ltd [2015] IEHC 490. Complaint is made that there was delay here. I do not see that there was. Yoplait's evidence is that it became aware on 27th February 2025 of Danone's likely intention to launch the impugned product in Ireland. It commenced these proceedings six weeks later, following on appropriate pre-litigation correspondence. I do not see any delay, never mind fatal delay to present in that chronology.

 

51.         Counsel for Danone has complained that blue-potted Yoplait and Danone are competing in Belgium since last October and no proceedings have been commenced in that jurisdiction, nor was a letter of complaint sent in that jurisdiction which included text saying 'and please do not do this in any other jurisdiction either'. There are a couple of problems with this proposition. First, in Belgium the competition between Yoplait and Danone in the Skyr context is for products sold in a different manner (e.g., Yoplait sells in multipacks) to what is done or proposed to be done in Ireland. So I do not see that this is a relevant comparator jurisdiction in respect of which the just-mentioned complaint (regarding delay) can be made. Second, I do not see that this in any event alters the fact that Yoplait only became aware on 27th February 2025 of Danone's likely intention to launch the impugned product in Ireland, then engaged in appropriate pre-litigation correspondence, and then commenced these proceedings six weeks later; again, I do not see any delay, never mind fatal delay to present in that chronology. This is not a case in which, to paraphrase Keane J. in Nolan Transport (Oaklands) Ltd v. Halligan (Unreported, High Court, 22 March  1994), at 6, Yoplait has simply awaited events to unfold and then come to court expecting the court be as amenable to granting interlocutory relief as it would be where a party has moved expeditiously to protect its rights. Yoplait has proceeded with all due expedition.  

 

Other Jurisdictions

 

52.         I am, respectfully, perplexed by the assertion in Yoplait's written submissions that 'Yoplait...is actively and speedily taking action in other jurisdictions where necessary'. Maybe the 'out' for Yoplait in this regard is contained in the words 'where necessary'. I say this because on the evidence before me (as opposed to the submissions) Yoplait seems to have done precisely nothing in any other jurisdiction in terms of commencing proceedings. That said, I do not see in this non-commencement of foreign proceedings the significance that Danone purports to see in it. Particular mention was made in this regard of Yoplait's behaviour in Belgium and the United Kingdom. However, in Belgium  the competition between Yoplait and Danone in the Skyr context is for products sold in a different manner (e.g., Yoplait sells in multipacks) to what is done or proposed to be done in Ireland. And in the United Kingdom, the Yoplait Skyr products (now delisted) were different to those sold in Ireland, the get-up was different, and again the product was sold in multipacks. So neither jurisdiction offers a like-for-like comparator to the Irish experience. Danone has speculated that the reason Yoplait has proceeded in Ireland and not in other jurisdictions is because it wants to make a status quo argument in Ireland. That is but speculation; for my part I find it more convincing that there are factual differences between the situations presenting respectively in Ireland, Belgium, and the United Kingdom.

 

53.    Returning to Merck and O'Donnell J.'s helpful identification (at para.64) of the steps that fall to be applied in a case such as that now presenting, let me just focus in on how I see the 'land to lie' as regards each step and what I have stated thus far:

 

'(1)        First, the court should consider whether, if the plaintiff succeeded at the trial, a permanent injunction might be granted. If not, then it is extremely unlikely that an interlocutory injunction seeking the same relief upon ending the trial could be granted;

 

              [As mentioned, I consider that at the trial, a permanent injunction might be granted.]

 

(2)          The court should then consider if it has been established that there is a fair question to be tried, which may also involve a consideration of whether the case will probably go to trial. In many cases, the straightforward application of the American Cyanimid and Campus Oil approach will yield the correct outcome. However, the qualification of that approach should be kept in mind.  Even then, if the claim is of a nature that could be tried, the court, in considering the balance of convenience or balance of justice, should do so with an awareness that cases may not go to trial, and that the presence or absence of an injunction may be a significant tactical benefit;

 

              [For the reasons previously stated, I consider that there is a fair question to be tried. Will this matter go to trial? That is hard to say. There is a tactical advantage to Yoplait in securing the application it has sought. Nonetheless, (i) the notable blueness of the Danone product is a consequence of what I understand to be a pan-European move by Danone to this type of blue in its products, so that is something which it may continue to want to do, (ii) Danone itself has pointed to the commercial undesirability of its having to re-design its products in Ireland and the United Kingdom (with a re-design for Ireland alone being, I understand, not commercially attractive), so that seems to be a less desired option on its part, and (iii) based on its stance in these proceedings, Danone appears genuinely to consider that it has right on its side in terms of the allegation of passing off. When one has regard to (i), (ii) and (iii), these factors suggest to me that regardless of any tactical advantage that the granting of the interlocutory injunction may yield for Yoplait, this matter is more likely than not to proceed to full hearing.

 

(3)          If there is a fair issue to be tried (and it probably will be tried), the court should consider how best the matter should be arranged pending the trial, which involves a consideration of the balance of convenience and the balance of justice;

 

              [For the reasons identified previously above, which involved a consideration of the balance of convenience and the balance of justice it seems to me that this aspect of matters is best achieved by maintaining the present status quo.]

 

(4)          The most important element in that balance is, in most cases, the question of adequacy of damages;

 

                        [I have considered the adequacy of damages above and concluded that, for the reasons stated, damages would not be an adequate remedy for Yoplait.]

 

(5)          In commercial cases where breach of contract is claimed, courts should be robustly sceptical of a claim that damages are not an adequate remedy;

 

              [Not a relevant factor in this case.]

 

(6)          Nevertheless, difficulty in assessing damages may be a factor which can be taken account of and lead to the grant of an interlocutory injunction, particularly where the difficulty in calculation and assessment makes it more likely that any damages awarded will not be a precise and perfect remedy. In such cases, it may be just and convenient to grant an interlocutory injunction, even though damages are an available remedy at trial.

 

              [See (4).]

 

(7)          While the adequacy of damages is the most important component of any assessment of the balance of convenience or balance of justice, a number of other factors may come into play and may properly be considered and weighed in the balance in considering how matters are to be held most fairly pending a trial, and recognising the possibility that there may be no trial;

 

              [I have considered various other relevant factors above. and why I am inclined to the view that the interlocutory injunction being granted offers the fairest means of dealing with matters pending a trial, recognising the possibility that there may be no trial. On whether or not there will be a trial, see further my response to (2).]

 

(8)          While a structured approach facilitates analysis and, if necessary, review, any application should be approached with a recognition of the essential flexibility of the remedy and the fundamental objective in seeking to minimise injustice, in circumstances where the legal rights of the parties have yet to be determined'.

 

[I have approached my reasoning and judgment with this in mind.]

 

54.    For all the various reasons stated, I will grant the interlocutory injunction sought, subject to Yoplait giving an undertaking as to damages.

 

55.    Nothing in this judgment should be read or construed as indicating any view as to how the substantive proceedings in this matter will be decided should they proceed to hearing in due course.

 

56.    I will hear the parties as to costs.

     

 

 

 

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