Court of Appeal upholds injunction against Danone for passing off Skyr yoghurt pending trial.

THE COURT OF APPEAL

APPROVED

NO REDACTION NEEDED

Neutral Citation Number: [2025] IECA 163

Record Number: 2025/138

High Court Record Number: 2025/1908P

Whelan J. MacGrath J. Hyland J.

BETWEEN/

YOPLAIT IRELAND LIMITED

PLAINTIFF/RESPONDENT

- AND -

NUTRICIA IRELAND LIMITED

DEFENDANT/APPELLANT

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 packaging is consistent with its established branding and trademark.

12. Yoplait issued proceedings on 10 April 2025 that were heard in the High Court on 29 April 2025. Yoplait was granted an interlocutory injunction restraining the entry of Danone into the market pending a full determination of proceedings in the High Court in a judgment delivered on 2 May 2025. The parties were facilitated with an early hearing date, and judgment, given the proposed launch date of 6 May.

Legal Framework - Passing Off

13. In defining the tort of passing-off, Wadlow in On the Law of Passing-Off (Sweet & Maxwell 6th edn. 2021) refers to what he describes as the “classical Trinity” of passingoff – goodwill, damage and misrepresentation. In his dissenting judgment in Adidas Sports v Charles O’Neill & Co [1983] ILRM 112, where the Supreme Court dismissed a claim for passing-off brought by Adidas against O’Neill sportswear in respect of the use of the three stripe design on sports clothes, Henchy J. identified the elements of the tort as follows: “… that trader does not get a right of action against a rival trader for passing off until that rival puts forth goods for sale bearing that distinctive indication or a colourable imitation thereof, thereby misrepresenting his goods as those of the person who has acquired the goodwill or proprietary repute created by the distinctive feature and, by such unfair trading, causing a degree of financial loss, actually incurred or likely to be incurred by the person who has acquired the goodwill or the “intangible property right” created by the idiosyncratic mark, design or get up”.

14. The House of Lords reformulated the test in the case of Reckitt & Coleman Ltd v Bordan Inc. [1990] RPC 341, as subsequently followed in Jacob Fruitfield v United Biscuits UK Limited [2007] IEHC 368, and McCambridge Ltd. v Joseph Brennan Bakeries [2013] 1 ILRM 369, as follows: (a) the existence of a reputation or goodwill in the claimant’s product including, where appropriate, in a brand name or get-up; (b) misrepresentation leading to confusion between what is alleged to be the offending product and the claimant’s product; and (c) whether damage to the claimant’s goodwill or reputation by virtue of any such confusion has been established (the “Reckitt test”).

15. The challenge raised by Yoplait is in relation to what is known as the “get-up” of Danone’s product i.e. as identified by Wadlow, “the whole visible external appearance of goods in the form in which they are likely to be seen by the public before purchase. If the goods are sold in packages, then their get-up means the appearance of the pack taken as a whole.” (paragraph 8-277). As observed by O’Higgins J. in Adidas, relying on Kerly’s Law of Trade Marks 10th edn., a claim for passing off based on get-up alone (as distinct from, for example, signs, marks, names etc.) is rare and there can hardly be passing off by get-up alone unless the resemblance between the goods is extremely close. Nonetheless, many of the Irish passing off cases are claims on the basis of get-up.

Standard of review

16. The applicable standard of review is of considerable importance in this appeal. Danone’s primary position is that there were errors of principle in the way in which the trial judge determined the application, including in respect of whether there was confusing similarity, and that this court was bound to substitute its own overall impression of the products with that of the trial judge. However, it went further than that, with counsel arguing that, even if there were no errors of principle established, this court could substitute its own view of the products with that of the trial judge with no, or minimal deference to his view, given that the evidence was the same and there was no conflict on the facts.

17. Yoplait took a different approach, alleging that Danone is attempting to relitigate the issues determined in the High Court de novo. For Yoplait, a review of the grant of an interlocutory injunction requires there to be either an error of principle in the trial judge’s analysis of fair trial, or an injustice in his conclusions regarding the adequacy of damages, the balance of convenience, or delay, citing Bowe v. Sheriff [2025] IECA 14 and Betty Martin Financial Services Ltd. v. EBS DAC [2019] IECA 327. Betty Martin was an appeal against a decision to grant an interlocutory injunction to a tied agent restraining the financial institution from terminating its agreement with the plaintiff. Albeit in the context of agreeing with counsel’s submission, Collins J. accepts that appellate review of the grant of an interlocutory injunction might be more nuanced than the normal review of discretionary orders: “35. What is before this Court is, of course, an appeal from the decision of the High Court and, citing Lawless v Aer Lingus [2016] IECA 235 and Ganley v RTE [2019] IECA 18, the agent contends that that decision was made in the exercise of the Judge's discretion, based on a correct application of the applicable principles and that the decision was one that was clearly open to him on the evidence and, accordingly, a significant margin of appreciation should be afforded to that decision (para 11 of the Agent's written submissions to this Court). In his oral submissions, Mr McGrath SC refined that position somewhat, accepting (correctly, in my view) that a distinction is to be drawn in this context between the analysis of whether a fair question/serious issue had been established on the one hand and, on the other, the Judge's consideration of adequacy of damages, balance of convenience and delay. In respect of the former, Mr McGrath accepted that if this Court identified an error of principle in the analysis of the Judge, it could properly intervene but as regards the latter, intervention was appropriate only if this Court was satisfied that there is an injustice.”

…

18. Accordingly, I am approaching the analysis 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, 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). The type of matters that might justify intervention were touched upon in Betty Martin: “40. Where the High Court does not explain its basis for taking a particular view on a contested issue and/or fails to engage appropriately with the arguments made to the Court by one or other party on that issue, that will necessarily affect the weight to be attached to the Court's view on appeal. An obvious parallel is provided by the appropriate approach to findings of fact made by the High Court. In general, such findings will bind an appeal court: Hay v O’ Grady [1992] 1 IR 210. That will not be the case, however, where the Judge fails to engage with the evidence of both sides and explain why one side or the other has been preferred: Doyle v Banville [2012] IESC 25; [2018] 1 IR 505.”

19. A similar approach to discretionary decisions is taken in England and Wales. In VTB Capital plc v Nutritek International Corp [2013] 2 AC 337 (referred to by Charleton, J. in Ryanair v. Billigfluege [2015] IESC 11, where the appropriate standard of review by an appellate court was discussed), the Supreme Court was concerned with an appeal against a decision on a stay on the grounds of forum non conveniens, noting that this was a field where different conclusions could be reached by different tribunals, without either being susceptible to legal challenge, and that the jurisdiction to stay was liable to be perverted if parties litigated the issue at different levels of the judicial hierarchy in the hope of persuading a higher court to strike a different balance in the factors pointing for and against a foreign forum. At para. 96 Lord Mance referred to the lower court’s

decision as reflecting “a classical interlocutory weighing up exercise with which an appellate court should be slow to interfere”, while observing that the Court of Appeal could consider arguments that the judge took into account irrelevant or mistaken material, or omitted some relevant material, or that the conclusion was one that no reasonable judge could have reached. For the sake of clarity, I will describe this as the “discretionary standard of review”.

20. The position is somewhat different in respect of the fair issue test. The focus there is less upon the exercise of discretion by the trial judge, and more upon the trial judge’s substantive conclusion that the plaintiff has made out a fair issue to be tried. That analysis will involve a necessarily brief analysis of whether the legal wrong alleged is one recognised by law and whether the facts alleged, if made out, are sufficient to permit a conclusion that the defendant committed those legal wrongs. The analysis will usually necessitate mixed questions of facts and law, and inferences may require to be drawn.

21. As such, a decision on the existence of a fair question in my view falls into the intermediate category of appellate review described by Murray, J. in AK v US [2022] IECA 65, i.e. where the appellate court is addressing alleged errors by a trial judge in the findings made based on affidavit or documentary evidence alone, or where a court is reviewing secondary findings of fact not dependant on oral evidence, such as inferences from admitted facts or those proven otherwise than by way of oral testimony. It is true that AK was addressing the appellate standard in the context of an appeal against a substantive decision, rather than an interlocutory one. Nonetheless, there is no reason in principle why it cannot be applied to the instant situation.

22. That test is as follows. The approach of the court is to be somewhat deferential. The appellant must show that the trial judge clearly erred in a material respect. However, following Northern Bank v. Charlton [1979] IR 149, the appellate court can rely on its own judgment as to whether the trial judge was correct or not. It is preferable not to describe this standard as “error of principle”, as this risks confusion with the first category of review identified by Murray J., i.e. the standard applicable to findings of pure law where the appellate court simply forms its own view untrammelled by any finding reached by the trial court (the “error of law standard”). Rather it is best described as the “intermediate standard” i.e. the standard applicable where it is alleged errors of evaluation have been made on material other than oral evidence.

Goodwill/Reputation

23. Danone’s first ground of appeal was that the trial judge erred in respect of the question as to the existence of reputation or goodwill in Yoplait’s product. It argues that the judge confused a reputation that Yoplait enjoys in its name and in its logo, with a reputation in its get-up, in other words the get-up on the Skyr yoghurt products. It argues that there was no evidence before the court of a reputation in that get-up and that the evidence pointed the other way.

24. Yoplait on the other hand, asserts there was sufficient evidence to support the trial judge’s conclusion, going beyond the evidence of Professor McLoughlin relied upon by the trial judge. In that respect, it points to the fact that the Yoplait product has been on the market since September 2022, that it is the leading producer of Skyr on the Irish market, that it is the only branded Skyr on the Irish market, that there has been a significant spend marketing the product (€1.385 million since 2024) and that it was reinvesting about 35% of its sales into the market.

25. The trial judge relied upon paras. 41-43 of the affidavit of Professor McLoughlin, which are in the following terms: “41. …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. In addition, strong physical availability of the brand has been achieved, with the product distributed in 70% of Supervalu stores and 100% of Aldi stores nationwide.

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 - a task that takes time, measured in years, and financial investment.”

26. The trial judge referred to the definition offered by Lord McNaughton in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 as follows: - “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.”

Analysis

27. It is fair to say that there is significantly less focus at interlocutory stage in the Irish case law on the establishment of goodwill than on the issue of confusing similarity. In many cases, simply establishing the product has been on the market for some significant length of time will be sufficient to establish a fair issue in respect of goodwill. An example of this approach may be seen in the case of Mitchelstown Co-Operative v Goldenvale Food Products (Unreported, High Court, Costello J. 12 December 1985), relied upon by Yoplait. There, Costello J. observed that the product in question, i.e. Dairygold, was the first product of its kind on the Irish market, that since its introduction, sales were substantial, that for 10 months before the arrival of the defendant’s product (Easigold), Dairygold’s product was sold in the gold pot which had particular characteristics, and that it was widely and extensively advertised. In the circumstances, he concluded that he could not regard the plaintiff’s contention that it had a sufficient reputation on which to ground a passing off action as a frivolous one and he was satisfied that a serious question had been raised on this point.

28. I take a similar view in the circumstances of this case and can see no error in the approach of the trial judge. What is required is that there is a reputation and goodwill associated with a particular product. It is fanciful to suggest that the name and mark in this case are not relevant to the establishment of goodwill. For the consumer to identify the product as a Yoplait Skyr yoghurt to which goodwill attaches, they must of necessity rely upon the mark and the name for the purposes of identification. But as I understand the case law, the point is that it is not sufficient to show that Yoplait name and mark enjoy goodwill: rather, what must be shown is that the Yoplait Skyr yoghurt has a reputation and goodwill associated with it in the minds of the consumer. Therefore, when one is considering the goodwill question, one looks at the entirety of the product presented to the consumer, including but not limited to the Yoplait mark and name. For that reason, I do not accept that in considering goodwill and reputation, it is necessary to ignore the Yoplait mark or name. Further, it is clear from Professor McLoughlin’s reference to a “mosaic” of brand assets that he was identifying assets including but not limited to the Yoplait mark or name.

29. In addition, there is other evidence that suggests a fair question in relation to the existence of goodwill: the product has been on the market since 2022, it is the brand leader among branded Skyr products, there has been significant sums invested in marketing and advertising. In the circumstances 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. I therefore reject this ground of appeal.

Misrepresentation leading to confusion

30. Danone argues that the trial judge erred in his conclusion that there was a fair issue to be tried as to whether the second part of the Reckitt test i.e. misrepresentation leading to confusion had been satisfied. (I refer to “confusing similarity” in this judgment as representing that test as a convenient shorthand, but, as noted in my findings on the form of order, this description does not fully encapsulate the applicable test). There are various complaints made by Danone and I will deal with each in turn. However, before doing so, it is necessary to identify the products visually. The first and second photos are the 450g products. The third and fourth are the 800/850g products. The final photo is a simulation, or “mock-up” of a chill cabinet with the 800/850g Yoplait and the Danone products side by side. A mock-up was required because Danone Skyr yoghurt is not at present on sale in the Irish market.

Survey Evidence

31. Yoplait commissioned a survey on the extent to which consumers considered the 450g Yoplait pots to be similar to the 480g Danone pots. Over 700 consumers were surveyed. A “mini” survey was carried out on 92 people in relation to the 800/850g pots when it became clear that Danone were not launching the 480g product on the market. At the hearing, counsel for Danone explained that only the conclusions of the survey were put in evidence and not the actual questionnaires and answers. Significant criticisms (detailed below) were made by Danone about the methodology of the survey, and the fact of reliance upon it by the trial judge.

32. The trial judge commenced his consideration of the survey by referring at para. 26 to the case law on reliance on such evidence, quoting the decision of McCracken J. in Smithkline Beecham plc v Antigen Pharmaceuticals Ltd [1999] 2 ILRM 190 to the effect that: - “Survey 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.”

33. A similar observation had been made by McCracken J. in Griggs Group Ltd v Dunnes Stores Ireland Co (Unreported, High Court, 4 October 1996), where he held that “the plaintiffs have not put forward any independent evidence to this effect other than a very informal survey carried out by the Plaintiff’s solicitors, which consisted of stopping persons in the street, showing them a pair of boots and asking them “what brand of shoes are these?” The courts have always been sceptical of survey evidence, particularly when it is taken in such an informal way…”

34. The finding in Smithkline Beecham was referred to in Galway Free Range Eggs Ltd v O’Brien & Ors [2019] IECA 8 where Costello J. (as she then was) noted as follows: - “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.”

35. Accordingly, I am treating the views of McCracken J. in the interlocutory context as representing the existing state of the law.

36. The trial judge then turned to the substance of the survey, observing that Danone complained that Yoplait’s survey evidence was belatedly submitted four days before the hearing date and that it did not have time to commission its own survey evidence. I should emphasise that no application was made before the trial judge to exclude the evidence. Indeed, it was clear that the trial judge facilitated the parties by giving them a very early hearing date and delivering judgment in a very short space of time where it was indicated to him that the matter was urgent in view of the proposed launch date for Danone’s Skyr yoghurt. At para. 28 the trial judge observed as follows: - “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.”

37. Again, at para. 29 he observes: -

“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.”

38. At para. 30 he set out the evidence deriving from the survey in some detail. At para. 37 he observes as follows: - “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.”

39. Danone criticises the Trial Judge’s reliance on Yoplait’s consumer survey, arguing that it was methodologically flawed and that the trial judge ought to have dismissed the survey evidence as having no evidentiary value under Smithkline Beecham. Moreover, Danone argues the survey results were inconsistent, with similar confusion rates for unrelated products, and that the results did not support the conclusions drawn from them. Various criticisms are made of the survey by Danone. First it says that the question was flawed in its wording. The question was as follows: “take a moment to look at these two products … how similar would you say that they are (on a 1-7 scale, where a 1 equals not at all/ completely different and 7 equals virtually the same/ identical) …?”. The consumers were then shown the two products. Counsel for Danone says that the reference to “products” is highly misleading since what the consumers were being asked about was get-up and not the product in the pot. Separately, it is argued that the reference to “similarity” was introducing a legal concept, and a more neutral question ought to have been asked. Finally, a complaint was made to the effect that the consumers were shown the wrong pot: i.e. the 480g Danone pot as opposed to the 450g Danone pot, which has quite a different shape. (The background to this is that Yoplait understood that Danone was introducing the 480g pot which has a similar shape to the Yoplait 450g pot. It was only on 9 April 2025, when a detailed letter was written by William Fry, Solicitors for Danone, in response to the letter from the solicitors for Yoplait, Browne Jacobs Ireland LLP, that it became clear that Danone were proposing to launch only a 450g pot size (as well as the 800g size) and photographs of same were provided).

40. Presumably because of the speed at which matters were being prepared for trial, consumers were asked to compare the 450g Yoplait pot and the 480g Danone pot when surveyed between 16 - 22 April 2025. Danone argued that the survey could not be relied upon at all because the wrong product had been put to consumers, given that the 450g Danone pot was quite different to the 480g pot both in shape and because it has no plastic lid, unlike the Yoplait 450g pot. It argued the mini survey carried out on 93 people comparing the 800g and the 850g products ought equally be disregarded given its limited scope.

41. Yoplait did not respond substantively to the criticisms based on methodology. Rather, it noted that the trial judge attached minimal weight to the survey evidence by the court, that it had no material bearing on his conclusions regarding the second limb of the Reckitt test and that the trial judge made it clear that the survey evidence merely buttressed the conclusions that he had already reached. Counsel observed that the trial judge did not come to a conclusion on the methodology of the survey or the types of questions posed, all of which were debated in front of him and stressed that it had been made clear to the trial judge that, if the judge was going to put weight on the survey, it could only be limited weight and that a fair reading of the judgment did not suggest he had placed any significant weight on it. Counsel also pointed out that the trial judge carefully identifies the limits of what he can do with the survey evidence at para. 26.

42. On the other hand, counsel for Danone focussed on paras. 28 and 29 of the judgment, where, it is argued, there is a substantive reliance by the trial judge upon the “problem” that the survey results presented for Danone.

Analysis

43. I accept that there is a certain inconsistency in the way in which the trial judge initially addresses the survey evidence. On the one hand, he acknowledges that Danone have raised issues as to survey methodology but on the other he criticises them for not engaging with the problem the survey results present for them, in other words treating those results as if they are to be relied upon as matters of concern. Danone argues that the survey results cannot be relied upon without addressing the methodology concerns. While accepting this inconsistency of approach, it seems to me that the real question I must consider is whether the trial judge substantively relied on the survey in coming to his conclusion, or whether he made an independent judgment based on the other evidence before him. If he took the latter course, then these comments ought to be discounted as not being material to his decision.

44. When an appellate court is considering a judgment, the court must look at the entirety of the judgment and not take sentences or paragraphs out of context (see paragraph 144 of Nolan v. Dildar [2024] IECA 298). Here, quite separately to the survey results, the trial judge explicitly addresses the evidence of the get-up of the products. He describes the get-up, considers it in the context of the supermarket presentation and the way in which consumers shop, considers the presence of the tradenames and marks of the competing products and considers the evidence in relation to confusion in Belgium. Having done all of that (and having summarised the survey evidence as opposed to making findings upon it) he comes to the following conclusion at para. 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.”.

45. In my view, the section of the judgment on confusion/misrepresentation, taken as a whole, must be read as demonstrating that the trial judge has formed his own impression of the question of misrepresentation/ confusion based on the evidence before him, and that the survey results simply buttress that conclusion. I cannot agree with Danone’s submission that he impermissibly relied on the survey evidence. He had already stated the correct approach i.e. that survey evidence is not to be relied upon on in an interlocutory application. To accept Danone’s submission would require me to ignore his summary of the case law and para. 37, where he makes it clear that he had reached his conclusions on the evidence other than survey evidence, and the latter simply “buttressed” those conclusions. Because of my conclusion in this regard, I consider it unnecessary to address the criticisms of the survey methodology.

46. For those reasons I must reject the argument that the trial judge erred in his treatment of the survey evidence.

Evaluation of the competing products

47. The next point made is that the court made an error of principle in placing such emphasis on the colour of the packaging, in particular the blue colour in combination with white, in circumstances where blue and blue and white are generic to the segment of the market. The trial judge commenced his consideration of this argument by identifying the relevant customer i.e. a person buying Skyr yoghurt in the supermarket in Ireland. At para. 21 he asks how the products are likely to be viewed by a typical consumer, 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, without over emphasising the individual elements, where it is almost certain that the purchaser will not take the opportunity to engage in a detailed consideration of the different products. He then describes the two products in some considerable detail.

48. At para. 34 he observed that it is the sheer blueness (with white as a background colour) that jumps out when one looks at the Yoplait and Danone containers and that when one sees them side by side in a supermarket fridge, this colour trait predominates. The trial judge refers to a photograph exhibited by Mr. Markey which shows two shelves of yoghurt products with the top shelf stacked with Yoplait and Danone products. (This is in fact a photograph from Belgium where both products are on sale, albeit that the Yoplait product is a multipack of 4 yoghurts). The trial judge goes on to observe as follows: - “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.”

49. At para. 36 he says that it is the “sheer blueness” that jumps out when one looks at the Yoplait and Danone containers that are in issue and that, when one sees them side by side in a supermarket fridge, this colour trait predominates.

Analysis

50. It is relatively unusual for a court to determine there is no fair issue to be tried given the low bar to be surmounted in that respect. At para 6-87 of Kirwan, Injunctions Law and Practice (Round Hall, 2020, 3rd ed.), he describes the “very useful, practical rule of thumb” in terms of how to identify the relevant threshold set out by Barniville J. (as he then was) in O’Gara v Ulster Bank Ireland DAC [2019] IEHC 213, where he said: “It may be helpful to view the threshold in terms of requiring a plaintiff who seeks an interlocutory injunction to demonstrate that there is a question or issue which would withstand an application to dismiss under inherent jurisdiction of the court (as observed by Haughton J. in Wingview) or under O.19, r.28 RSC as disclosing no reasonable cause of action or as being frivolous or vexatious. The threshold is of that order and so unless the case is unstateable, it is generally not a difficult threshold to meet.”

51. In Tynan v. Kilkenny County Registrar [2011] IEHC 250, Laffoy J. (a judge with enormous experience of injunction applications) observed that it was rare in her experience that on an interlocutory injunction the court did not find that the plaintiff had at least an arguable case. Of the eight interlocutory decisions on passing off cases in Ireland relied upon by the parties in this appeal, injunctions were refused wholly or partially in six of them, but in only one of those cases – Jacob Fruitfield – was the injunction refused on the basis that no fair question had been raised (in that case, in respect of confusing similarity).

52. Moreover, Danone must, at the appellate level, clear the considerable hurdle of showing there is no fair issue to be tried.This means, as discussed above in the context of standard of review, Danone must show that the trial judge made a material mistake in his

conclusion that there was no fair issue to be tried.

53. This is particularly difficult in a passing off injunction. It is clear from the case law that a judge is entitled to assess similarity and the risk of confusion at interlocutory stage on the basis of their own impression – see Laffoy J. in Symonds Cider and English Wine Co Ltd v Showerings (Ireland) Ltd [1997] 1 ILRM 481 where she observed: “I have not had regard to the market research evidence in relation to the likelihood of confusion, which the defendant argued was inadmissible, because, adopting the test postulated by Blackburn J in Dalgety Spillers Foods Ltd. V Food Brokers Ltd. [1994] FSR 504 at p. 527, I believe that my experience as an ordinary shopper or consumer enables me, just as well as any other, to assess the likelihood of confusion”; and Clarke J. in Jacob Fruitfield Limited v United Biscuits UK Limited [2007] IEHC 368 at para. 31 – “… it has often been said that in cases such as this first impressions are best…. such a consideration is particularly apposite in a case, such as this, where the product will almost invariably be purchased from a stacked supermarket shelf in circumstances where, as we all know from common experience, a purchaser is likely to spend very little time indeed making a choice … [para. 3.2] I have to confess that nothing identified in either the affidavit evidence, or the argument of counsel, caused me to divert from the initial impression which I got of the competing products in this case”.

54. A similar approach in the context of the substantive trial was taken by McMenamin J. in McCambridge, where he observed: “The question of the similarity between the get up of two products is, to a substantial measure, a matter of first impression … A court of appeal may also make its own judgment on this point”. (Of course, in the trial of the action, it is very likely that survey and other evidence of the reaction of consumers to the get up will be adduced).

55. Thus, a trial judge in an interlocutory hearing is entitled to rely on his or her impression of the get up. By necessity, that is a subjective analysis. Of course a material error could be found by an appeal court in those circumstances, for example if the trial judge ignored a critical aspect of the get-up or arrived at a view that no reasonable judge could come to: but showing material error where the starting point of the trial judge’s conclusion is their subjective impression of the products appears to me a significant challenge.

56. Here, the trial judge considered all the constituent elements of the get-up. He lists out the various aspects of the competing products and describes them. His focus is undoubtedly on the colour. Nonetheless, he addresses the presence of trademarks and tradenames on both products and correctly summarises the law in this regard, citing Jacob Fruitfield and McCambridge, both of which are to the effect that where there is a clear presence of a brand or tradename, it is likely the purchasers will identify the differences in the product by reference to it, but the test will be as to the overall impression on the observer created by the packaging. No challenge is made to the trial judge’s statement of the law in this respect. He takes the view that the trade names and the logos are insufficient to sufficiently distinguish the products, applying the test of the overall impression on the observer created by the packaging.

57. He concludes that the blueness of the competing products is so pronounced that it was difficult to tell them apart in the picture during the few seconds available to a customer and that the colour traits predominated.

58. In respect of shape, the trial judge addressed, albeit briefly, the issue of the different shape of the smaller pots. To recap, the 800/850g pots are essentially the same shape – circular, with a plastic lid. The 450g pots are different shapes, with the Danone pot being taller, and square in shape but with rounded edges and without a plastic lid. On the other hand, the Yoplait pot is entirely round, smaller in height and with a plastic lid. The original 480g Danone pot was essentially the same shape as the Danone pot but is no longer proposed to be put on the Irish market.

59. At para. 24, he observed: -

“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.”

60. At para. 32 the trial judge observed as follows: -

“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.”

61. In short, the trial judge took the view that, viewing the products overall, there was no material difference between the shapes such as to undermine his impression of confusing similarity between the pots.

62. I take a different view of the issue of confusing similarity to the trial judge. My first impression of the get-up of the products is that they are quite distinct, particularly the 450g pots, given the differing shape of the pots, the lack of a plastic lid on the Danone pot, taken together with the clear presence of the trade name and trademark on both pots, and the different designs, and that therefore the risk of confusion is very low indeed. But as pointed out by Yoplait in its submissions, this is not a de novo hearing, and this court should not approach it in that way.

63. Therefore, although I have a different view to the trial judge on confusing similarity, I cannot conclude that the threshold of mistake has been reached. It was not entirely irrational for the judge to reach the conclusion that he did. It cannot be said that no reasonable shopper would come to the view he did in respect of the similarity of colours, or the emphasis he placed on colour. He took into account all the features of the respective pots. His impression was necessarily subjective, but no criticism can be made of him in that respect given the nature of the exercise he was required to carry out.

64. In summary, I do not consider that, approaching the matter with the appropriate level of mild deference, the trial judge can be showed to have made an error in this regard. He was entitled to draw inferences as to confusing similarity from the material presented to him and he did so, taking account of all relevant points.

65. Finally, I turn to the argument that the trial judge did not sufficiently address Danone’s case on the justification for the blue and white colouring. His reasoning was as follows: “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 proceeding (para.38).”

66. I fully accept that this was a peremptory response to those arguments, and, had this been the full trial, the trial judge would have been required explain why he rejected those arguments. But I do not think his response is sufficient to justify overturning his

decision. This is an interlocutory hearing, and all that Yoplait had to establish was that there was a fair issue in relation to the question of confusing similarity. Danone had explained the background to the choice of blue and white on its packaging for Skyr yoghurt, i.e. those colours were used it in the context of its trademark and that it was a natural evolution of earlier packaging get-up. But where the judge concluded in effect that there was a confusing similarity between the products based largely on colour, the reason that the colour had been adopted is not a complete answer to the claim of misrepresentation leading to confusion. It is well established that deception or intention is not required in the tort of passing off. The corollary to this is that, even if the choice of colour is entirely explicable by factors not referable to a desire to adopt packaging close in colour to the Yoplait Skyr product, that does not necessarily mean that no fair issue has been established. Of course, at the substantive trial, this issue will undoubtedly be revisited. But at interlocutory stage, the trial judge’s failure to explicitly explain why the background to the use of colour by Danone does not seem to me sufficiently material to necessitate a reversal of his decision.

67. More substantial is the argument that he failed to address the issue of blue and white being generic in the context of the relevant market, and therefore not confusing for the customer, a point that was pressed heavily by Danone. Photographs were provided of various products in the strained white breakfast yoghurt market (which includes natural, Greek and Skyr yoghurt) and one can see clearly that there are significant numbers of blue and white products. However, the trial judge explained that he considered the relevant customer was one shopping in Ireland for Skyr yoghurt. In that context, the colour of the other strained yoghurts becomes significantly less relevant, and possibly entirely insignificant. Danone has not explained why the trial judge materially erred in his identification of the customer. Danone would prefer that the market be more widely defined so that it can rely upon the prevalence of blue and white in this wider market. But it has not explained why the trial judge made an error of principle in defining the consumer as he did at interlocutory stage.

68. Indeed, there are objective reasons why one might define the market in this way: the dispute is exclusively about Skyr yoghurt and the word Skyr is clearly displayed on both products. The goodwill established (to an arguable level) is in Yoplait’s Skyr yoghurt and this is where the risk of confusion must be assessed. It seems unlikely that a costumer looking for Skyr yoghurt would mistakenly pick up a different kind of strained yoghurt given the prominence of the word Skyr on the pot. At the trial of the action, these issues can be revisited: but at this stage I consider the trial judge was entitled to exclude consideration of blue and white colour schemes in respect of the wider yoghurt market where he had treated the relevant customer as one shopping for Skyr yoghurt in Ireland.

Balance of convenience: Adequacy of damages

69. The preponderance of Danone’s challenge to the trial judge’s evaluation of the balance of convenience was concerned with the adequacy of damages. The trial judge had concluded that the starting point in a case such as this was that damages are inadequate, that Danone’s proposed undertaking as regards tracking sales would not meet the potential loss to Yoplait’s goodwill and reputation and that Yoplait would suffer some disadvantage which could not be compensated for in damages if the injunction was refused.

70. It might be noted that the cases on passing off injunctions in Irish law cited to the court preceded the decision of Merck Sharp & Dohme v Clonmel Healthcare [2019] IESC 65, which has somewhat recast the law on interlocutory injunctions. In my analysis of the cases that deal with adequacy of damages and balance of convenience, I have considered whether their applicability to the facts of the instant case ought to be treated as being altered by Merck (although no case to that effect was made by Danone). I am satisfied that the principles established by the passing off case law hold good even in the light of the more flexible approach identified by O’Donnell J. (as he then was) in Merck.

71. In the written submissions, Danone argued that Yoplait had not established goodwill, that there was accordingly no property right at stake and therefore the observations of Clarke J. in AIB v Diamond [2011] IEHC 505 were not relevant. In Diamond, Clarke J. held that the courts have always been anxious to guard property rights in the context of interlocutory injunctions, that a failure to vindicate that right on the basis that it could be compensated in damages “would amount to a form of implicit compulsory acquisition” and that the mere fact that it may, therefore, be possible to put a value on property rights lost did not, of itself, mean that damages are necessarily an adequate remedy, for the party concerned is entitled to its property rights instead of their value.

72. However, as pointed out by Yoplait the only requirement is for Yoplait to show that there is a fair issue to be tried in respect of its claim to goodwill associated with the getup of its Skyr products. The ineluctable logic of the law on passing off combined with the law on interlocutory injunctions is that, once an applicant for an injunction has established a fair issue to be tried in respect of goodwill, then it is entitled to be treated as a person whose goodwill is being interfered with, and this impacts upon the question of the adequacy of damages. One sees a strong thread throughout the case law to that effect. In Mitchelstown Co-Operative Society, the High Court held that it was “axiomatic that in most passing off actions damages are not an adequate remedy for successful plaintiff”. In DSG Retail v PC World Ltd [1998] IEHC 3 (Laffoy, J.) the court noted “the normal axiom in passing off actions, that damages would not be an adequate remedy for the plaintiff”. A similar approach was taken by Laffoy J. in Symonds Cider.

73. In Smithkline Beecham, McCracken J. observed: “As in all these cases, the Plaintiff finds itself in the very difficult position that it does not know, and cannot know, the extent to which it has lost or may lose sales through possible confusion, rather than legitimate business competition. To this extent, damages can virtually never be an adequate remedy to a Plaintiff, certainly in a situation where there are a number of competing products on the market, the performance of any of which could affect the Plaintiff’s sales”. (It should be noted that he also concluded damages would be an inadequate remedy for the defendant in that situation).

74. Clarke J. in Jacob Fruitfield, observed as follows: -

“4.2 … a proper application of the principles applicable to a consideration of the balance of convenience and the adequacy of damages will normally, in a passing off case, lead to the conclusion that the plaintiff will suffer uncompensatable damages and that the balance of convenience will favour the grant of an injunction. The factors which lead to such a conclusion may vary from case to case.”

75. He went onto say at paras. 4.1-4.2 that he did not think there was a rule of law to the effect that an interlocutory injunction would also be granted in passing off cases on the basis that damages would inevitably be uncompensable. Focusing specifically upon goodwill as a property right in the context of passing off he observed: “4.3 Firstly a claimant's goodwill is a property right which should not lightly be taken to be capable of being diminished or interfered with in return for damages. If the claimant is refused an interlocutory injunction but succeeds at trial, then it follows that the claimant's goodwill will have been interfered with in the intervening period in a manner which will be difficult to assess and, in many cases, not capable of adequate compensation in damages.

4.4 As pointed out by Laffoy J., in DSG Retail, the fact that customers may buy the competing product, believing it to be that of the claimant, necessarily gives rise to a risk of uncompensatable damages to the goodwill of the claimant. This will be so even if that situation lasts for only a relatively short period of time. The claimant is entitled to his goodwill as it is. He is entitled not to have its value diminished even with the payment of compensation.

4.5 These, and other factors are likely to lead to a conclusion, in at least most cases, that a plaintiff will suffer significant and uncompensatable damage if he is refused an interlocutory injunction but succeeds at trial.”

76. It may be seen from the above there is a very strong line of case law identifying that goodwill is a property right and should be treated as such in the context of an application for an injunction. The trial judge correctly averted to the law in this respect, relying upon AIB v Diamond and Merck (where O’Donnell J. identified the supplementary protection certificate (“SPC”) as a property right and considered that to be relevant in deciding that the balance of convenience favoured an injunction). In respect of adequacy of damages, the trial judge referred to the dicta in Mitchelstown Co Operative to the effect that in most passing off actions, damages are an inadequate remedy. In short, the trial judge adopted an entirely uncontroversial approach to the adequacy of damages in passing off cases.

77. Faced with this array of case law, Danone’s argument was narrowed down at the hearing to an argument that the trial judge had reverted to the approach that it was axiomatic that damages were not an adequate remedy in a passing off case and had abandoned what was described as his more “nuanced and sophisticated analysis in Rowex” (Glaxosmithkline (Ireland) Limited v Rowex Limited (Unreported, High Court, Barrett J., 19 May 2015). Counsel accepted that there were statements in the case law to the effect that in most cases damages were not an adequate remedy but argued that the analysis could not be left there, that it was necessary to look at the position for the defendant if it is injuncted and there were particular features not analysed by the trial judge. In analysing those arguments, it must be remembered that the conclusion of the trial judge on the adequacy of damages represents an exercise of his discretion to which a high degree of deference is accorded, which will only be disturbed if it is necessary to correct an injustice, and not on the basis that the appellate court might have taken a different view.

78. It is obviously not an error to decide that damages are an adequate remedy in one case but not in another, where the question of adequacy of damages is highly fact dependent. The trial judge considered the evidence in Rowex and certainly engaged in a more detailed analysis than he did in the instant case; his more succinct approach here was perhaps a function of the fact that he was endeavouring to provide a judgment within the time window identified by Danone.

79. But Danone’s argument that this represents an error of principle is entirely unconvincing. Here, the trial judge followed what I might describe as the default approach in passing off cases i.e. damages are treated as an inadequate remedy 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. There is conflicting evidence of the parties on this point, but in my view no injustice or indeed error has been shown in the approach of the trial judge.

80. Danone argues that those special circumstances include the inadequacy of damages it will suffer if injuncted. But that factor was considered by the trial judge. At para. 44 he refers to the fact that the inadequacy of damages for Yoplait is not changed by the fact that Danone is keen to get its products to the market. He refers to the statement by Clarke

J. in Jacob Fruitfield at para. 4.10 to the effect that the cost of delay in coming to market is readily calculable in damages. Nor, he says, is there any reason on the evidence before him to conclude that delayed entry by Danone would negatively impinge on how its product performs when its product is eventually launched, if launched. Again, the trial judge followed what I might describe as the orthodox approach to the adequacy of damages as compensation for delayed entry into a market. This was an appropriate approach for the judge to take.

81. Separately, Danone identified that, if an injunction is granted, and if it decided to redesign its Skyr livery for Ireland, it would also have to redesign its Skyr livery in the United Kingdom to make such redesign commercially viable. The trial judge at para. 45 went onto say that the costs in that regard appeared to offer an almost classic example of a situation in which the costs and hence if any evidential damages payable could be calculated readily. That conclusion is not challenged by Danone.

82. Danone presented evidence to show that there was no evidence to suggest that the presence of Danone Skyr on the market in Belgium and the UK had damaged Yoplait whose sales grew following the launch of Danone’s Skyr. However, the market in Belgium is a different one with noncomparable products and it appears that no Danone Skyr products have yet been sold in the UK. Again, no injustice has been established.

83. In the circumstances, I am satisfied that Danone have not raised any argument that undermines the trial judge’s analysis of the question of the adequacy of damages.

Balance of Convenience: Status Quo

84. The trial judge observed at para. 46 that where an allegedly offending product has not come to the market, the balance of convenience favours the preservation of the status quo. He referred to the decision of Finlay Geoghegan J. in Contech Building Products Limited v Walsh [2006] IEHC 45 where she says 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 where a plaintiff moves speedily after learning of the commencement of selling of a product on a market. The trial judge concluded that the position now presenting was that Yoplait was selling on the market, and Danone was not selling on the market.

85. Danone seeks to criticise that finding on the basis that the trial judge erred only considering the position on the Irish market, and that, given the cases of Griggs and Rowex, the trial judge ought to have taken into account the activities of Danone in other markets. Danone relies on a dicta in Rowex where Barrett, J. observed that Glaxo was asking the court to impose an interlocutory injunction that would set Ireland apart from much of the rest of Europe as regards free trade in AirFluSal and free competition between it and Seretide in their respective purple liveries.

86. Counsel for Yoplait distinguished Rowex on the basis that it was inter alia a medicinal product that must be prescribed and that if it was removed from the market, there may have been concern in the mind of a consumer that there may have been something defective or flawed with the product. The point was also made that the situation is quite different in the various jurisdictions in which Danone is operating, where there are different get-ups, different products and different formats, unlike the position in Rowex where the product sought to be sold was in precisely the same livery in twelve jurisdictions.

87. I do not consider that Danone even approach the (considerable) threshold of establishing that the judge erred in exercising his discretion to cause injustice in identifying the status quo in the manner he did. He adopted the mainstream position i.e. that one looks at the position on the market where the conduct complained of is taking place. That market is in Ireland. Neither Rowex nor Greggs identify any principled statement to the effect that a court is obliged to look to other jurisdictions when considering the status quo, and no such argument to that effect is made by Danone. Rather, they simply demonstrate that account may be taken of the position of other jurisdictions depending on the circumstances. That, without more, cannot form the basis for an argument that the trial judge exceeded his discretion, particularly where that discretion was exercised in an entirely orthodox way.

Balance of Convenience: Delay

88. Next, Danone challenged the trial judge’s rejection of its delay argument. Danone had argued that Yoplait had delayed in bringing on its application for an injunction, and in the context of the balance of convenience, that ought to preclude the grant of the relief to Yoplait. The argument was somewhat unusual, given that it was uncontested that Yoplait only became aware of Danone’s intention to place the contested products on the market sometime in early March 2025. Given that the plenary summons was issued on

11 April 2025, sensibly, no argument was made that there was delay in respect of that period. However, it was contended that when Danone placed its Skyr products on the Belgium market in competition with Yoplait, Yoplait ought to have anticipated that Danone would be placing those products on the Irish market, or at least have been concerned by that possibility and ought to have written to Danone to clarify the position. Predictably, Yoplait responded by saying the relevant market was Ireland and its only obligation was to move when it became aware the product was intended to be launched in Ireland.

89. This argument is made in circumstances where, on the evidence before this court, Danone sells Skyr yoghurt in Romania, France, Belgium, the United Kingdom and Italy in a variety of get-ups. The trial judge dealt with the argument in short order. He referred to the accepted legal position to the effect that a plaintiff must move quickly to restrain a product which is alleged to involve passing off, citing Irish Times Ltd v Times Newspapers Limited [2015] IEHC 490, where a delay of some months was considered fatal. He identified that Yoplait became aware on 27 February 2025 of Danone’s likely intention to launch the impugned product in Ireland. (In fact, it became clear at the hearing of the appeal that the date was a little later, likely early March although the precise date cannot be ascertained).

90. In respect of the argument relating to the presence of the computing Skyr products in Belgium, he observed that the competition between Yoplait and Danone in the Skyr context is for products sold in a different manner, whereby Yoplait sells in multipacks unlike the position proposed in Ireland, and therefore it was not a relevant comparator jurisdiction. He added that in any event the position in Belgium cannot alter the fact that Yoplait only became aware in early 2025 of Danone’s intention to launch the impugned product in Ireland. In those circumstances he concluded that he saw no delay and that Yoplait had proceeded with all due expedition.

91. Counsel for Danone argued that it was reasonable to expect Yoplait to make inquiries when the product appeared in Belgium and that had it done so, Danone would have given full information as to its proposed intentions, as it did in the letter of 9 April written by William Fry and Company, when Yoplait raised the question of passing off in the context of its knowledge of the intended launch in Ireland. But it must be acknowledged that the detailed letter of 9 April was preceded by a letter from Browne Jacobson, solicitors for Yoplait. On the other hand, the response by Danone to the letter of 18 March 2025 sent by Yoplait itself, rather than its solicitors, in respect of its concerns about the product, was met with a considerably less expansive response from Danone on the 28 March 2025. A one-page reply was sent by Mr. Pechereau, General Manager, France, in the following terms: “You also appear to group all our products in Belgium, France, United Kingdom and Ireland together despite being fully aware that the facts and legal regimes in each jurisdiction vary. As such we do not consider your letter to be anything more than an attempt to unfairly force a competitor into a rebrand”. It went on to state that Danone did not consider the allegations to have any merit and that it would robustly defend any court action while confirming it was available for constructive dialogue.

92. Mr. Pechereau puts it perfectly when he identifies that the facts and legal regimes in each jurisdiction vary. The duty to act with expedition cannot include a duty to make inquiries when a product of the competitor appears in a different jurisdiction, in a different format and where there is no reference to an Irish launch whatsoever. It is clear from this appeal that Yoplait and Danone are keen competitors and that no quarter is given on either side in respect of seeking to grow their markets. That is precisely what one would expect of companies of their nature. But in that context, to ask the court to accept that Danone would have disclosed details of its Irish launch – if indeed those details were to hand at that stage – back in October 2024, or that Yoplait had a duty to make such inquiries, seems to me entirely unrealistic. In those circumstances I am quite satisfied that the trial judge exercised his discretion appropriately in his rejection of this argument.

Form of Injunction

93. Finally, there is a dispute between the parties as to the terms of the Order restraining breach, with Danone appealing the form of Order made by the trial judge on the basis the Order should be narrower and more tailored, and without the reference to “confusingly similar”, so that Danone knows precisely what it may or may not do. The form of Order made in the High Court was, in substance, as sought in the notice of motion brought by Yoplait and is in the following terms:

“It is ordered that the Defendant, its servants or agents be restrained from passing off its skyr products as those of the Plaintiff including (without prejudice to the generality of the forgoing) by placing on the market in Ireland SKYR products which utilise a get-up that is confusingly similar to the get-up of the Plaintiff’s products, as set forth in Schedule 1 hereto (excluding the Danone bottles as identified in Schedule 2 hereto), pending the determination of these proceedings and subject to the Plaintiff giving an undertaking as to damages”.

94. Yoplait argues that the trial judge was correct in making a wide order of a type identified in the Court of Appeal decision of Coflexip SA v Stolt Offshore MS Ltd [2001] 1 All ER 952, where it rejected the narrower form of restraining order directed by Laddie J. in the High Court [1999] 2 All ER 593. It must be emphasized that Coflexip is a patent case, and the decision of the Court of Appeal decision is not particularly clear in relation to the appropriate order in a passing off case. At para.64 Aldous LJ observes: “In passing-off cases a change of circumstance can alter the representation made and therefore the injunction normally sets out the act which is to be prevented, qualified by such words as “so as to pass-off”.

95. That suggests a narrower form of injunction than that suggested by Yoplait. Having said that, it is true that later in the judgment, there is a passage that suggests that an approach more generous to the person who has established an infringement ought to be taken, at least in patent cases, as follows: “The advantage to the defendant of only having the injunction cover a particular article or process is clear. If he makes a change he will not be in breach and it will be up to the patentee to bring another action. However, the disadvantage to the patentee is equally clear. To obtain an injunction, he has to establish his monopoly and that it has been infringed, and the judge must conclude that further infringement is apprehended. From his point of view, it is the infringer who should seek guidance from the court if he wishes to sail close to the wind. In the normal course of events that would be reasonable”.

96. At the appeal hearing, counsel for Danone identified that particular objection was taken to the words “or confusingly similar thereto” in the Order. It was argued that confusing similarity absent misrepresentation does not constitute passing off, that those words were too vague and that an alleged breach of that order put Danone at risk of a committal application. Counsel stressed the premium that must be put on certainty, given the consequences of successful contempt proceedings. Yoplait, on the other hand, relied on the judgment of the Court of Appeal in Microsoft Corp v Plato Technology Ltd [1999] IP & T 1 where the Court identified that a claimant, whose intellectual property rights had been infringed, was generally entitled to a wide form of injunctive relief, although that did not rule out the entitlement of the court in an exceptional case to grant relief in a narrower form.

97. The cases of both Microsoft and Coflexip make it clear that a court has considerable discretion in deciding upon the appropriate form of order. However, despite the high standard that must be surmounted in overturning a discretionary decision of a trial judge, I consider that Danone have met the threshold in the following circumstances. Although the words “confusingly similar” are often used as a shorthand for the second part of the Reckitt test (and I have used them as such in this judgment) they are quite unsuitable for use in an Order because their inclusion suggests that they represent the entirety of the relevant test. This is not correct. The test is misrepresentation leading to confusion between the alleged offending product and the claimant’s product. Charleton & O’Reilly, in ‘Passing Off: a flexible safety net for traders’ in EUIPO (ed), 20 Years of the Boards of Appeal at EUIPO, Celebrating the Past, Looking Forward to the Future (Liber Amicorum Alicante 2017), observe as follows: “But the essence of the tort remains that the public is deceived and not merely confused. On its own, confusion cannot ground a passing off claim, though it may be sufficient where the allegation is of trade mark infringement. As Wadlow notes, deception presupposes the existence of a misrepresentation, confusion does not. The absence of evidence of actual confusion is not decisive”.

98. As such, I am satisfied that the trial judge’s approach represents an error of law and gives rise to a potential injustice and should be set aside. In considering the appropriate form of Order, I think it inappropriate to include some general obligation that goes beyond these proceedings. Rather, the Order should simply address the specific subject matter of these proceedings, i.e. it should restrain (on an interlocutory basis) the alleged passing-off of (identified) Danone Skyr products as (identified) Yoplait products. But it should not go beyond that: Danone is already constrained, as are all persons putting goods on a market, from passing off its goods as that of a competitor. It was so constrained before these proceedings, and it will continue to be so constrained.

99. An injunction in wider terms would simply be restating Danone’s existing legal obligation not to pass off, but with the potential sanction of contempt proceedings if an argument was made that passing off had taken place. In my view, it is difficult to see why a finding of passing off, to the low standard of a fair issue, should be used as a springboard to convert Danone’s general obligation not to pass off into a court order to that effect. This is particularly so given that the question of whether passing off has occurred can only be decided by considering the get up in any given case. In other words, the type of Order sought by Yoplait would not give any guidance to Danone as to what it could or could not do, because that can only be assessed once a complaint was made.

To grant Yoplait the injunction in the form it seeks (entitling it to allege contempt) would be to give it a significant and unwarranted advantage if it alleges further infringement, even though the legality of any new get up is a separate and distinct question from that which preoccupied this court and the High Court. It might result in a contempt hearing addressing an entirely new complaint about passing off, which would require to be determined for the first time in the context of the contempt jurisdiction. That seems quite inappropriate in the circumstances of this case.

100. Subsequent to the hearing, it was drawn to the court’s attention that the 450g pots provided to the court after the hearing, at its request, varied in certain respects from the 450g pot put before the High Court and the Court of Appeal that is the subject of this judgment. Remarkably, it was said that the pot provided after the hearing in the Court of Appeal was the one that had always been intended to be placed on the market in Ireland by Danone. An affidavit was sworn by Rosalie de Brun on 29 July 2025 explaining how this situation came about and defining this new version as the “Sample Tub”. Photos of the Sample Tub are exhibited at Tab 2 and Tab 3 of RDB1. In the circumstances, it is appropriate that the Sample Tub as defined by Ms. de Brun in her affidavit also be covered by this Order.

101. In those circumstances, I propose an Order in the terms referred to by Aldous L.J. in Coflexip i.e. setting out the act which is to be prevented, qualified by a reference to passing off, as follows: “The Defendant, its servants or agents are restrained from passing off their Skyr products on the market in Ireland (such products being the Danone 450g and 800g Skyr yoghurt pots identified in the photos in the body of this judgment, and the Sample Tub as referred to at paragraph 100 of the judgment of 1 August 2025 of the Court of Appeal in the within proceedings) as those of the Plaintiff (such products being the Yoplait 450g and 850g Skyr yoghurt pots identified in the photos in the body of this judgment) pending the determination of these proceedings and subject to the Plaintiff giving an undertaking as to damages. The Plaintiff has liberty to apply”.

102. I wish to emphasise that, unlike the Order that was overturned in Coflexip, this injunction will not allow Danone to do other acts even though they may infringe (para.

65 of Coflexip). The Order does not move the dial in respect of future actions one way or another. If Danone is alleged to have committed the tort of passing off again, Yoplait can seek injunctive relief in the normal way. Danone are aware of the risk it runs if it sails too close to the wind.

Conclusion

103. Accordingly, I reject the appeal of Danone and uphold the decision of the trial judge to grant an injunction to Yoplait, albeit in modified terms. I am conscious that Danone is being denied entry to a market that, on its case, it is fully entitled to enter. If it transpires that it is correct, competition will have been stifled. As identified in Lord Scarman in Cadbury Schweppes v Pub Squash [1981] 1 WLR 193 at 200 (approved in Adidas and McCambridge), there is a delicate balance to be drawn between protection and competition: “But competition must remain free: and competition is safeguarded by the necessity for the plaintiff to prove that he has built up an “intangible property rights” in the advertised descriptions of his product: or, in other words, that he has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant, however, does no wrong by entering a market created by another and thereby competing with its creator. The line may be difficult to draw; but, unless it has drawn, competition will be stifled”.

104. In those circumstances, there is an obligation upon Yoplait to expedite the trial of the action and to make an application to the judge in charge of the commercial list in this respect.

105. As far as costs are concerned, Yoplait should file and serve a short, written submission of not more than 1,500 words within 4 weeks from the date of delivery of this judgment, after which Danone will have a further 2 weeks in which to file and serve replying submissions of the same length. Application may be made in writing for a short extension of these time periods if they cause difficulty by reason of the holiday period.

106. Since this judgment is delivered electronically, I am authorised by Whelan and MacGrath JJ. to state that they agree with it and with the orders proposed above.