Yoplait Ireland Ltd has secured an interlocutory injunction in its High Court proceedings against Nutricia Ireland Ltd, the Irish subsidiary of Danone – preventing the launch of Danone’s “Skyr Icelandic Style Yoghurt" in the Irish market until Yoplait’s passing off claims have been resolved.
Yoplait’s proceedings allege passing off, with the company claiming that the packaging (or “get up”) of Danone’s product is confusingly similar to its own “Skyr” product and that, by using this packaging, Danone are intentionally piggybacking on its goodwill and engaging in unfair competition.
The Irish Supreme Court has confirmed (in McCambridge Ltd v Joseph Brennan Bakeries [2012] IESC 46) that, in order to establish passing off, a plaintiff must demonstrate:
1. The existence of a reputation or goodwill in their product including, where appropriate, in a brand name or get-up;
2. Misrepresentation leading to confusion between the alleged offending product and their product; and
3. Damage to their goodwill or reputation by virtue of such confusion.
Traditionally, the second limb of this test has led would-be plaintiffs to expend considerable time and resources in commissioning customer surveys and / or market research and / or in trawling through customer complaints databases in search of examples of real-world consumer confusion.
Interestingly here, however, Mr Justice Barrett was prepared to grant Yoplait’s injunction notwithstanding Danone’s objections that Yoplait had not provided any such concrete evidence of consumer confusion and that the customer survey data that had been provided by Yoplait did nothing to advance its claims.
Instead of requiring that real-world consumer data, Mr Justice Barrett appeared prepared to put himself in the position of the consumer and grant the injunction sought based on his own perception of the similarity between the products and, by extension, his own instinct on the likelihood for confusion to arise.
Having reviewed photographs of Yoplait and Danone’s products placed side by side, Mr Barrett commented that it was the “sheer blueness (with white as the background colour) that jumps out when one looks at the Yoplait and Danone containers that are at issue” and that the “blueness of the competing Yoplait / Danone products is so pronounced that it is difficult to tell them apart in a picture”. On that basis, Mr Justice Barrett concluded that there was a sufficiently established likelihood of confusion so that the injunction could be granted.
It remains to be seen whether this approach will be followed by other judges / courts and whether it may indicate a change in focus for the second limb of the McCambridge test. In that regard, it is important to note that Mr Justice Barrett was giving judgment in the context of an interlocutory injunction motion, where the plaintiff is required to show only a “fair question to be tried” in terms of the substance of the dispute. It may be that the more demanding standard (necessitating the sort of real-world data which has typically featured in Irish passing off claims to date) will be required of Yoplait for the purposes of final determination of its claim.
Matheson will continue to monitor the development of the case, including any authoritative guidance arising.
For more information on this or on matters of intellectual property more generally, please contact Commercial Disputes and Investigations senior associate, Naoise Cosgrove or Technology and Innovation partner, Carlo Salizzo, or your usual Matheson contact.