Yoplait Ireland Ltd v Nutricia Ireland Ltd

• Jurisdiction: Ireland
• Court: Court of Appeal (Ireland)
• Judge: Ms. Justice Hyland
• Judgment Date: 01 August 2025
• Neutral Citation: [2025] IECA 163
• Year: 2025
• Docket Number: Record Number: 2025/138

Between/

Yoplait Ireland Limited

Plaintiff/Respondent

and

Nutricia Ireland Limited

Defendant/Appellant

[2025] IECA 163

Whelan J.

MacGrath J.

Hyland J.

Record Number: 2025/138

High Court Record Number: 2025/1908P

THE COURT OF APPEAL

Injunction – Passing off – Form of order – Appellant appealing against the grant of an injunction – Whether the form of the order was likely to bring about an injustice

Facts: The respondent, Yoplait Ireland Ltd (Yoplait), was a producer and distributor of Skyr yoghurt products in Ireland. The appellant, Nutricia Ireland Ltd, a subsidiary of the Danone group (Danone), intended to launch its Skyr products in Ireland on 6 May 2025, using packaging that Yoplait alleged closely resembled its own. Correspondence between the parties commenced on 18 March 2025, with Yoplait seeking undertakings from Danone not to launch the products in Ireland. On 28 March 2025, Danone replied, disputing the claim. On 2 April 2025, Yoplait again wrote seeking undertakings as to passing off. Danone declined to provide such undertakings, disputing the claim of passing off and asserting that its packaging was consistent with its established branding and trademark. Yoplait issued proceedings on 10 April 2025 that were heard in the High Court on 29 April 2025. In a judgment delivered on 2 May 2025 ([2025] IEHC 301), Barrett J granted Yoplait an interlocutory injunction restraining the entry of Danone into the market pending a full determination of the proceedings in the High Court. Danone appealed to the Court of Appeal against the grant of an injunction.

Held by Hyland J that, applying the three-part Reckitt test (Reckitt & Coleman Ltd v Bordan Inc. [1990] RPC 341), in respect of the question as to the existence of reputation or goodwill in Yoplait’s Skyr product, Yoplait had met the low threshold of fair issue to be tried. She held that the trial judge formed his own impression as to misrepresentation/confusion based on the evidence before him, including samples of the get-up. She rejected Danone’s submission that he impermissibly relied on the survey evidence. In respect of the trial judge’s evaluation of the competing products, she held that, given the trial judge’s entitlement to assess similarity and the risk of confusion leading to misrepresentation on the basis of his own impression, Danone had not established material error. She held that Danone had failed to establish material error in the trial judge’s conclusion that the relevant customer was one shopping in Ireland for Skyr yoghurt, rather than one shopping for white strained yoghurts as Danone contended. In respect of the adequacy of damages, she found that the trial judge adopted an uncontroversial approach i.e. damages are treated as an inadequate remedy in passing off cases because there is an acknowledged difficulty in calculating damage to goodwill and reputation, unless some special circumstances apply to displace that approach; he held that no such special circumstances had been established. She found that no injustice or error had been shown in that approach.

Hyland J held that, in respect of the form of the order restraining Danone, the way it was formulated by the trial judge i.e. restraining Danone, not just from passing off the goods the subject of the proceedings, but from placing on the market confusingly similar Skyr products, was likely to bring about an injustice. She upheld Danone’s appeal in that regard and made an order restraining Danone from passing off their Skyr products as those of Yoplait’s Skyr products pending the substantive proceedings.

Appeal allowed in part.

Unapproved

No Redaction Needed

JUDGMENT of Ms. Justice Hyland delivered on the 1 August 2025

Summary

1 This is an appeal against the grant of an injunction by Barrett J. ( [2025] IEHC 301) to Yoplait, restraining Danone from passing off certain Skyr yoghurt products as those of Yoplait pending the trial of the substantive action. Skyr yoghurts are made using a traditional Icelandic recipe and are low in fat and high in protein.

2 I have approached the appeal on the basis that conclusions of the trial judge in respect of adequacy of damage, balance of convenience and related matters are an example of the exercise of a discretion as identified by Irvine J. in Lawless v Aer Lingus [2016] IECA 235, and as such, entitled to a considerable margin of deference by this court, with intervention only being appropriate if the court was satisfied that there was an injustice (whether or not error on the part of the trial judge has been identified). On the other hand, in considering the trial judge's conclusion on fair issue to be tried, the appellant must show that the trial judge clearly erred in a material respect.

3 Applying the three-part Reckitt test, in respect of the question as to the existence of reputation or goodwill in Yoplait's Skyr product, I am satisfied that Yoplait have met the low threshold of fair issue to be tried in respect of the question of reputation and that the trial judge was correct in so finding.

4 In respect of the question of misrepresentation/confusion, and the relevance of survey results at interlocutory stage, I have followed established authority in concluding that the survey results presented in this case should not be relied upon. However, despite the trial judge's reference to those results, I conclude that he formed his own impression as to misrepresentation/confusion based on the evidence before him, including samples of the get-up, and that the survey results simply buttressed his conclusion. Accordingly, I reject Danone's submission that he impermissibly relied on the survey evidence.

5 In respect of the trial judge's evaluation of the competing products, I conclude that, given the trial judge's entitlement to assess similarity and the risk of confusion leading to misrepresentation on the basis of his own impression (that being necessarily a subjective analysis), Danone have not established material error, despite the fact that I would have taken quite a different view on that question to the trial judge. The trial judge considered all the constituent elements of the get-up of both products, emphasised colour, and addressed the presence of trademarks and tradenames on both products, concluding that the trade names and the logos did not sufficiently distinguish the products given the test of the overall impression on the observer.

6 I further conclude that Danone have failed to establish material error in the trial judge's conclusion that the relevant customer was one shopping in Ireland for Skyr yoghurt, rather than one shopping for white strained yoghurts as Danone contends.

7 In respect of the adequacy of damages (considered in the context of balance of convenience), the trial judge adopted an uncontroversial approach i.e. damages are treated as an inadequate remedy in passing off cases because there is an acknowledged difficulty in calculating damage to goodwill and reputation, unless some special circumstances apply to displace that approach. He concluded no such special circumstances had been established. No injustice or indeed error has been shown in the approach of the trial judge. I take a similar approach to the question of the status quo, rejecting Danone's argument that the trial judge erred in only considering the position on the parties on the Irish market, and not their activities in other markets. Equally, I reject Danone's argument that Yoplait delayed in bringing these proceedings.

8 Finally, in respect of the form of the Order restraining Danone, I conclude that the way it was formulated by the trial judge i.e. restraining Danone, not just from passing off the goods the subject of these proceedings, but from placing on the market confusingly similar Skyr products, is likely to bring about an injustice. Accordingly, I uphold Danone's appeal in that regard and make an Order restraining Danone from passing off their Skyr products as those of Yoplait's Skyr products pending the substantive proceedings. The precise form of Order is set out in the conclusion section of this judgment.

Factual Background

9 The respondent to this appeal, Yoplait Ireland Limited (“Yoplait”), is a producer and distributor of Skyr yoghurt products in Ireland. It launched its Skyr range in September 2022, initially with a 4x100g format, followed by the introduction of 450g and 850g formats in November 2023. These products are sold in packaging featuring a blue and white colour scheme with mountain imagery. In October 2024, Yoplait updated its logo on the packaging but retained the overall get up. Yoplait asserts that its Skyr products are the leading offerings in the Irish market, supported by substantial marketing investment exceeding €1.3 million and strong sales performance, including over 430,000 units of the 850g product sold in 2024.

10 The appellant is Nutricia Ireland Limited, a subsidiary of the Danone group (“Danone”). Danone first launched Skyr products, including yoghurt, with blue and white packaging in France in 2018. It also sold them in Romania. In 2024, Danone undertook a brand refresh and introduced redesigned Skyr packaging in Belgium and Italy in October 2024. It announced a launch of those products in the UK in February 2025. Danone intended to launch its Skyr products in Ireland on 6 May 2025, using the redesigned packaging that Yoplait alleges closely resembles its own.

11 Correspondence between the parties commenced on 18 March 2025, with Yoplait stating that the Danone Skyr products are confusingly similar to their own and seeking undertakings from Danone not to launch the products in Ireland. On 28 March 2025, Danone replied, disputing the claim. On 2 April 2025, Yoplait again wrote seeking undertakings as to passing off. Danone declined to provide such undertakings, disputing the claim of passing off and asserting that its...