Yoplait Ireland Ltd v Nutrica Ireland Ltd

• Jurisdiction: Ireland
• Court: High Court
• Judge: Mr Justice Max Barrett
• Judgment Date: 02 May 2025
• Neutral Citation: [2025] IEHC 301
• Docket Number: [2025 No. 1908 P]

Between

Yoplait Ireland Limited

Plaintiff

and

Nutricia Ireland Limited

Defendant

[2025] IEHC 301

[2025 No. 1908 P]

THE HIGH COURT

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

1 . By notice of motion of 10 ^th 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 I.R. 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 27 ^th 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 27 ^th 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:

27 ^th 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.

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

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

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

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

6 ^th 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.

9 ^th 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.

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

29 ^th April 2025. Application for interlocutory relief heard.

2 ^nd 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 I.R. 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 W.L.R. 491 and later approved by the Supreme Court in McCambridge Ltd v. Joseph Brennan Bakeries [2013] 1 I.L.R.M. 369, 377): (i) existence of a reputation or goodwill in the claimant's product,...