Passing off: what is meant by “Greek yoghurt”?Print publication
In Fage UK v Chobani UK Ltd  , the claimants, FAGE, were a Greek manufacturer of yoghurt and its UK distributor. FAGE had sold its product in the UK for a number of years and enjoyed a 95 per cent market share. The defendants, Chobani, were a US yoghurt manufacturer and its UK distributor. Both products were described as “thick and creamy” (when compared with ordinary yoghurt). The FAGE yoghurt was produced – in Greece – by a straining process. Historically, the thick and creamy yoghurt not produced in Greece had been marketed in the UK as “Greek style yoghurt” and this yoghurt was produced by the use of thickening agents rather than by straining.
Chobani began selling its yoghurt in the UK in 2012 using the “Greek yoghurt” label. FAGE obtained an interim injunction on the basis that the label Greek yoghurt could only be used in respect of yoghurt produced in Greece by a process of straining, and that to use the phrase, as Chobani was doing, in respect of yoghurt not produced in this way was a misrepresentation. At trial, Briggs J held that Chobani’s use of the term “Greek yoghurt” amounted to extended passing off.
“Extended passing off” is a form of passing off where the action is brought by or on behalf of a class of traders sharing the (collective) goodwill of a mark. Case law has shown that to succeed in an action for passing off it is necessary to establish the following elements:
- a business selling a class of goods to which the particular trade name applies
- a class of goods that is clearly defined, and a trade name or get-up that distinguishes that class from other similar goods in the minds of the public, or a section of the public
- goodwill which attaches to the name or get-up because of the reputation of the goods
- a claimant who, as a member of the class of traders selling the goods, owns goodwill that is of substantial value
- substantial damage (actual or likely) to the claimant’s goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached.
The Court of Appeal dismissed Chobani’s appeal. The grounds for appeal were that the term “Greek yoghurt” was a general term which was entirely appropriate to describe a broad range of products, including US-made yoghurt to be sold in the UK. Chobani argued that FAGE had failed to prove that the term “Greek yoghurt” had become sufficiently distinctive of a defined category of goods so as to provide a proper foundation in law for a passing off claim.
As a further ground for appeal, Chobani argued that under Council Regulation 1151/2012 concerning the protection of designations of origin and geographical indications for foodstuffs within the EU, the court had no power to grant injunctive relief to protect geographical indications, such as “Greek yoghurt”, other than in accordance with the Regulation. Since “Greek yoghurt” had not been registered under the Regulation, Chobani maintained, the court lacked the jurisdiction to grant the injunction.
Distinctiveness and extended passing off
The Court of Appeal explained that in essence extended passing off was no different from ordinary passing off save that, whereas in ordinary passing off the defendant has misrepresented his goods as those of the claimant, in extended passing off, he has misrepresented his goods as those of a class of traders to whom the claimant belongs. There was no extended requirement to show that all members of the public understood how the goods were made and nor was it a requirement to establish extended passing off that the class of persons entitled to use a geographical denomination in relation to particular goods must be defined and controlled by law or some other regulation.
The Court of Appeal was satisfied that Briggs J was entitled to find that a clear majority of consumers of Greek yoghurt believed that it came from Greece and also that the description conveyed the meaning that it had been produced in a particular way. The term “Greek yoghurt” was sufficiently distinctive and could be used by those traders whose yoghurt was made in Greece according to the particular specification. To a section of the public, the term “Greek yoghurt” was not purely descriptive but had come to denote a product of a particular kind.
The 2012 Regulation
Chobani’s argument under the 2012 Regulation was also rejected. The phrase “Greek yoghurt” was not used in Greece and, as such, was not capable of protection under the Regulation.
Two of the Court of Appeal judges gave full judgments, demonstrating the importance of the issues raised in the case. The lesson though is that where a substantial part of the relevant public recognise a product as coming from a particular place and having particularly desirable qualities, the courts will protect the producers of those products. Apparently descriptive terms, like “Greek”, may enable a product to benefit from protection where the above requirements are satisfied.
  EWCA Civ 5