In the recent English High Court decision of Fage UK Ltd & Another v Chobani UK Ltd & Another  EWHC 630, Mr Justice Briggs (soon to be a Court of Appeal judge) considered whether US-produced yogurt could be sold in the UK under the description "Greek Yogurt". In a colourful judgment, which ranges from a discussion on the process of yogurt production to criticism of a number of the defendants' witnesses for resorting to "deliberate untruths", the judge held that the description "Greek Yogurt" was capable of protection under the English common law of passing off. Chobani was therefore permanently restrained from selling its US-made yogurt in the UK under the description Greek Yogurt.
Following a line of cases which has already seen the English courts grapple with complaints from Champagne, Sherry, Whisky, Swiss chocolate and Vodka producers, the English court has now apparently added Greek Yogurt to the list of geographic specific products. While at a basic level a claim of passing off is typically used to prevent consumers from being deceived as to the genuine trade origin of particular goods and services, the 'extended passing off claim' (as used here) can provide protection to whole classes of goods. In addition to demonstrating ownership of the requisite goodwill attached to the relevant trade name or get up, in order to extend protection in this way "the name must, in the public mind, be associated with a clearly defined class of goods, sufficiently distinguished from other similar goods by that name".
On the basis of the parties' evidence, the Court concluded here that over 50% of all buyers of yogurt labelled "Greek Yogurt" in the UK believed that the product was made in Greece. However, in cases involving trade names or signs which are descriptive of the geographical origin of the product, public recognition of a product's provenance alone is not sufficient to satisfy the requisite goodwill threshold. Instead, the Court said that the public must perceive the term "Greek Yogurt" to mean more than merely Greece as its place of manufacture. Although the Court could not describe what this "something more" might be in precise terms, it suggested that the words "Greek Yogurt" "must have some drawing power in [their] own right".
Having assessed the parties' evidence, the judge concluded that the geographical provenance of Greek Yogurt "mattered" to a significant proportion of the 50%, entitling Greek Yogurt to extended protection. In the absence of sufficient explanation or qualification as to the true origin of its goods, Mr Justice Briggs found that Chobani's use of the description "Greek Yogurt' on its products would inevitably lead to a misrepresentation that was likely to deceive consumers and damage the distinctiveness of that term. The fact that Chobani produced its yogurt according to the traditional method of straining was immaterial, both to the public's perception and the question of misrepresentation.
Although to a large extent this case turned on its own facts, it does highlight the flexibility of the English claim of passing off which allows claimants to capture a wide range of conduct which would otherwise escape censure under harmonised European trade mark law (provided of course that sufficient evidence of reputation or goodwill exists).
The full judgment can be found here.