High Court orders Yoplait's costs in the cause due to pending trial issues on passing off merits.

THE HIGH COURT [2025] IEHC 537 [2025 No.1908 P]

BETWEEN

YOPLAIT IRELAND LIMITED

PLAINTIFF

AND

NUTRICIA IRELAND LIMITED (2)

DEFENDANT

JUDGMENT of Mr Justice Max Barrett delivered on 31st July 2025.

Summary

This judgment follows a costs application brought by Yoplait after its previous successful application for interlocutory

injunctive relief. In this judgment, I explain why (i) I will order that Yoplait’s costs of the interlocutory application

shall be costs in the cause and (ii) I will make no order as to the costs of Nutricia (Danone).

1. This is a judgment concerning a costs application by Yoplait following on my judgment of 2nd May 2025 ([2025] IEHC 301) in these passing off proceedings, pursuant to which I granted an interlocutory injunction to Yoplait.

2. Instinctively one might expect that as Yoplait succeeded in its application for an injunction it should get an order for its costs simpliciter.

3. But, to use a colloquialism, the ‘fly in the ointment’ when it comes to making such an order is that some or all of the issues that were before me at the interlocutory stage will undoubtedly be live issues if and when this matter comes to trial.

4. In my previous judgment I decided the three limbs of the standard test for passing off by reference to whether Yoplait had an arguable case on each of those limbs. However, I was careful to include text to the effect that nothing I said in the judgment should be read or construed as indicating any view as to how the substantive element of this matter will proceed.

5. In this last regard, I was mindful of the cautionary note struck by Finlay C.J. in Westman Holdings Ltd v. McCormack [1992] 1 I.R. 151, 157-158, regarding the importance of judicial reticence when it comes to opining on the merits of a substantive case at the interlocutory stage.

6. Each limb of the passing off test may be in issue at the trial and I do not know what the trial judge will decide as regards this or any other aspect of the proceedings based on the evidence that is placed before them at the trial stage.

7. Although Yoplait was successful in obtaining interlocutory relief, that success was necessarily based on a threshold standard – that of establishing a fair issue to be tried – rather than proving its case in full. Success at the interlocutory stage is not equivalent to success on the merits. A party may prevail on an interlocutory application and still fail at trial, once the full evidential record is before the court.1 In such circumstances, an immediate costs order in favour of Yoplait would risk conflating provisional success with any (if any) final vindication, and might operate unjustly if Yoplait ultimately does not succeed in the substantive proceedings.

8. It follows that we are in the position where the decision at the trial will turn on issues in respect of which a different picture may emerge at trial. This is an aspect of matters that has been considered in, e.g., Glaxo Group Ltd v. Rowex Ltd [2015] 1 I.R. 185 and Paddy Burke (Builders) Ltd (In Liquidation and In Receivership) v. Tullyvaraga Management Co. Ltd [2020] IEHC 199.

9. It would be unfair and inappropriate to make a simple order for costs in favour of Yoplait in circumstances where Yoplait may yet (I do not know) be found at the trial to have failed to establish one or more limbs of the test for passing off.

10. To make such an order would also be unfair and inappropriate in that it would effectively render Yoplait’s undertaking as to damages (the ‘price’ of its obtaining the injunctive relief) largely or wholly illusory – I would be imposing a significant costs liability on

In this regard I recall, in particular, that in the to-be-expected hurry to bring on the interlocutory application, I

was presented at the injunction hearing with (and in my judgment had some regard to) survey evidence from Yoplait only, an evidential situation which seems highly unlikely to be replicated at the trial stage. Nutricia (Danone) in the teeth of an undertaking that was ordered to protect Nutricia (Danone) from losses resulting from my granting the injunction.

11. All that said, I do not see that this is an application in which (to echo O.99, r.2(3) RSC)

it is ‘not possible justly to adjudicate upon liability for costs on the basis of the interlocutory application’. So, an adjudication on costs now arises to be made.

12. It follows that, respectfully, I do not accept the contention of counsel for Nutricia (Danone) that I might properly reserve the issue of costs to the trial judge – though I note that this possible course of action, while raised in the written submissions of counsel for Nutricia (Danone), was not assiduously pursued at the hearing of the costs application.

13. In Paddy Burke, McDonald J. found, in an injunction application, that there was no serious issue to be tried. He accepted, however, that the position could be different at trial after the defendant had the benefit of discovery. As a result, when it came to costs he made an order for costs in the cause to the successful party and no order for the unsuccessful party’s costs.

14. The course of action taken by McDonald J. seems to me to be the correct and fairest way to approach matters here also. As counsel for Yoplait explained at the hearing the practical effect in monetary terms of my making such an order would be as follows:

‘[W]hat it mean[s] in reality is if, when we come to the trial of the action and supposing Danone succeed….that order would mean that I will never collect my costs of the interlocutory injunction….but that Danone can never collect costs of the interlocutory injunction…because essentially they lost that application….So, the reality is the only person who could get an upside is the winning party, here Yoplait in this context.’

15. It follows from all of the foregoing that I will order that Yoplait’s costs of the interlocutory application and of this costs application shall be costs in the cause. I will make no order as to the costs of Nutricia (Danone).