Irish Skyr case highlights need to avoid packaging and branding similarities

The ruling, in a case involving ‘Skyr’ Icelandic-style yoghurt, demonstrates the importance of ensuring brands’ get up differs from others on the market, to avoid customer confusion.

Jane Bourke and Hannah McLoughlin of Pinsent Masons commented following the Irish High Court’s decision to grant Yoplait a temporary order stopping Nutricia, and anyone acting on its behalf, from selling certain Skyr products in Ireland.

McLoughlin said: “The decision is significant for brand protection and intellectual property law in Ireland. Packaging and branding are often critical to consumer recognition and loyalty, with this case demonstrating how the courts interpret visual branding disputes, particularly in fast-moving consumer goods.”

Yoplait’s Skyr product, a best seller, was launched on the Irish market in 2022. The dispute centred on the visual presentation of Nutricia’s Skyr yoghurts, which Yoplait claim bear a striking resemblance to its own, particularly in their use of a distinctive blue colour scheme and minimalistic design. Yoplait argued that the similarities could lead to customer confusion, amounting to a case of passing off. The court granted the injunction on the grounds that the packaging of Nutricia’s new Skyr range could mislead consumers into thinking the products were associated with Yoplait.

Bourke said: “This is an important decision because the court has applied the ‘Merck test’ granting the interlocutory injunction. This demonstrates the test’s relevance beyond its original context in patent litigation, highlighting its applicability to brand-related disputes, such as passing off.”

The traditional criteria for granting an interim injunction were established in 1983, in a case known as Campus Oil. The three-stage test set out in that case requires the courts to consider whether an interim injunction should be granted based on the seriousness of the issue; the adequacy of damages as a remedy; and the balance of convenience between parties.

The Merck test, a reformulated injunction test that was introduced by the Irish Supreme Court in 2019, sought to achieve a more flexible, context-sensitive analysis. The extended test referred to several factors that might be weighed during the balance of convenience in appropriate cases – for example, the difficulty in calculating damages for either party.

Applying these principles, the court found that Yoplait had raised a credible concern that warranted immediate action to prevent potential damage to its brand and consumer trust.