Author: Leigh Smith (McDermott Will & Emery UK LLP)
Fage UK Ltd & Another v Chobani UK Ltd & Another  EWHC 630 (Ch), High Court, England and Wales, 26 March 2013
Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt123, first published online: July 17, 2013
The expression ‘Greek yoghurt’ has been held to possess a particular meaning for consumers and was therefore entitled to be protected.
This case concerned the use of the term ‘Greek yoghurt’ to describe yoghurt produced by the defendants. The yoghurt had a thick and creamy texture as a result of the process used to manufacture it, described as straining, but was manufactured outside of Greece. The claimants brought an action for extended passing off to prevent the on-going use of the term by the defendants. Whereas traditional passing off prevents one trader from misrepresenting the goodwill of another, extended passing off has been relied upon to prevent the goodwill in a particular term, that a consumer would identify with a particular type of product or characteristics of a product, being exploited by a trader producing a product that does not fall within the consumer's understanding of the term.
This form of passing off was first recognized in Bollinger v Costa Brava Wine Co Ltd  RPC 6 in respect of the term ‘champagne’. Extended passing off has since been relied upon to protect terms such as ‘sherry’ (Vine Products Ltd v Mackenzie & Company Ltd  RPC 1), ‘Scotch whisky’ (John Walker & Sons Ltd v Henry Ost Company Ltd  RPC 489) and most recently ‘vodka’ (Diageo North America Inc v Intercontinental Brands (ICB) Ltd  RPC 12).
Extended passing off consists of the same elements as classic passing off, namely a requirement to demonstrate goodwill, misrepresentation and damage.
The claimants sold yoghurt on the UK market under the mark TOTAL which was manufactured in Greece using the process described above and described as ‘Greek yoghurt’. The claimants argued that the use of the term ‘Greek yoghurt’, as opposed to ‘Greek-style yoghurt’, would mislead consumers into believing the yoghurt was manufactured in Greece.
For the claim to succeed, Mr Justice Briggs first had to be satisfied that there was goodwill in the term ‘Greek yoghurt’. This required the claimants to show that a substantial number of people buying Greek yoghurt in the UK believed that the term conveys the message that the yoghurt was made in Greece, and that this added an attribute to the product other than geographic origin. Consumers must recognize the difference between this and ‘Greek-style’ yoghurt, which would be of the same consistency but produced outside of Greece. If the claimants satisfied this requirement, they then had to show that use of the term in connection with a product made outside of Greece was a misrepresentation, and that this misrepresentation would cause damage.
Briggs J began by considering whether there was goodwill in the term. This, he noted, required the expression to add something attractive to consumers, rather than merely denote geographic origin. He also observed that previous cases, in particular Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Ltd  RPC 117 concerning the term ‘Swiss chocolate’, confirmed that ‘goodwill’ was not equivalent to ‘cachet’: in other words, the expression should denote a particular type of product but not necessarily a higher quality.
The claimants submitted evidence to support the assertion that consumers purchasing Greek yoghurt in the UK, in contrast with Greek-style yoghurt, believed that the yoghurt they purchased was produced in Greece. The claimants also submitted evidence to show that there was a naming convention that had been applied for over 25 years in the UK, subject to minor exceptions, that ‘Greek yoghurt’ was only used for yoghurt produced in Greece. Advice given to the defendants in the course of developing their product supported this proposition. There was also evidence to show that Greek yoghurt commanded a higher price per kilo than Greek-style yoghurt. The judge was satisfied that all yoghurt described as ‘Greek yoghurt’ sold in the UK by Fage or its competitors at all material times was yoghurt that was thick and creamy in texture and manufactured in Greece. He was further satisfied that a substantial proportion of consumers of Greek yoghurt would think it was produced in Greece, and that this conveyed something more than territorial origin. Accordingly, the claimants had established goodwill in the trade name.
Turning to whether there had been a misrepresentation, the judge considered that, once goodwill in the trade name was established, it was a clear misrepresentation to suggest that a product produced outside of Greece had been produced there. That the same method for producing the product had been used was immaterial, as the misrepresentation concerned the place of manufacture rather than the quality of the product. Revealing the true place of manufacture in small type on the reverse label of the product was not enough to avoid the misrepresentation.
Finally, the judge considered whether the misrepresentation caused damage to the claimants. He suggested that two types of damage were relevant in such cases. First, loss of sales and, second, erosion of the distinctiveness of the term the claimants sought to protect. In this instance, the judge formed the view that the latter damage was likely to occur. He therefore ordered that the defendants be prevented from using the expression ‘Greek yoghurt’ on their product.
The judge was persuaded by evidence in this case that demonstrated that a naming convention applied in the UK in relation to different types of yoghurt, which served to distinguish between ‘Greek yoghurt’ and ‘Greek-style yoghurt’. Curiously, the term ‘Greek yoghurt’, unlike other terms protected by way of extended passing off, receives no protection in its territory of origin. The judge refused leave to appeal; permission to appeal has, however, been lodged