Court of Appeal upholds appeal in Skyr passing off case

The case (44 pages/668 KB PDF) centres on Yoplait’s claim that Nutricia, a subsidiary of Danone, was passing off certain Icelandic-style ‘Skyr’ yoghurt products as Yoplait’s own, through allegedly confusing similar packaging and branding.

The High Court had previously granted an injunction restraining Nutricia from selling the disputed products in Ireland. However, Nutricia appealed the decision, challenging both the granting of the injunction and the form of the High Court’s order. While the Court of Appeal dismissed the appeal in substance, it upheld Nutricia’s challenge to the breadth of the order.

The High Court had restrained Nutricia not only from passing off its Skyr products as Yoplait’s, but also from placing on the Irish market any products that were “confusingly similar”. The Court of Appeal found this broader prohibition problematic, warning that it could expose Nutricia to contempt proceedings for conduct that would require separate judicial assessment.

In its judgment, the Court of Appeal emphasised that all parties are already bound by the general legal prohibition against passing off. To restate this obligation in an injunction, it said, would risk giving Yoplait an “unwarranted advantage” and could lead to enforcement complaints. Instead, the court limited the injunction to restraining Nutricia from passing off the specific Skyr products identified in the proceedings as those of Yoplait.

Laura Finn, intellectual property law expert at Pinsent Masons, said: “The decision highlights the importance of the court framing an order for injunctive relief in sufficiently precise terms so as not to expose a party to additional consequences for conduct that must be assessed separately or to offer a party an unfair advantage. It also confirmed established authority that survey evidence should not be relied upon in interlocutory applications.”

The court also addressed the issue of product similarity, particularly the shape and appearance of the yoghurt pots. The High Court found no material difference in the shape of the pots, contributing to its impression of confusing similarity. However, the Court of Appeal took a different view, noting that the “get up” of the pots was “quite distinct”. Despite this, the appellate court deferred to the trial judge’s subjective assessment, stating that it was not a “de novo” hearing and that the trial judge was entitled to assess similarity on the basis of his own impression. Accordingly, the Court of Appeal found that no error had been made.

Maureen Daly, intellectual property partner at Pinsent Masons said: “This judgment is a timely reminder for FMCG brands that visual similarity, even in a crowded market like yoghurts, can lead to legal difficulties. So, it is advisable to seek legal advice if in doubt”.