In Fage UK Ltd & Anor v Chobani UK Ltd & Anor [2013] EWHC 630 (Ch), the English High Court has found that the term "Greek yoghurt" has a particular meaning to consumers and should therefore be protected.

BACKGROUND

This case concerned the use of the term "Greek yoghurt" to describe a yoghurt produced by the Defendants outside Greece. Fage, which sold a yoghurt on the UK market manufactured in Greece and described as Greek yoghurt, argued that the use of "Greek yoghurt" as opposed to "Greek-style yoghurt" would mislead consumers into believing the yoghurt originated in Greece and was produced in accordance with a particular method.

Fage brought an action for extended passing off to prevent the on-going use of the term. 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 trade name, which a consumer would identify with a particular type of product, being exploited by a trader producing a product that does not fall within the consumer’s understanding of that trade name. Extended passing off has been relied upon to protect terms such as champagne, sherry and, most recently, vodka.

DECISION

For the claim to succeed, Mr Justice Briggs had to be satisfied that a substantial number of people buying Greek yoghurt in the UK would believe that the yoghurt was made in Greece, that use of the term in connection with a product made outside Greece was a misrepresentation, and that this misrepresentation would cause damage. He began by considering whether or not there was goodwill in the term. This, he noted, would require it to add an element that is attractive to consumers, rather than merely denote geographic origin. He also noted that goodwill was not equivalent to quality; the term should denote a particular type of product, but it was not necessary that the product should be better in quality.

Fage submitted a substantial amount of evidence to support the assertion that consumers purchasing Greek yoghurt in the UK, as opposed to Greek-style yoghurt, believed that the yoghurt they purchased was produced in Greece. There was also evidence to show that Greek yoghurt commanded a higher price per kilo than Greek-style yoghurt. Fage submitted evidence to show that there was a convention in the UK that the term "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. The judge was satisfied that a substantial proportion of consumers of Greek yoghurt would think it was produced in Greece, and that Fage had established goodwill in the trade name.

Turning to whether or not there had been a misrepresentation, the judge considered that, having established goodwill in the trade name, it was a clear misrepresentation to suggest that a product produced outside Greece had been produced there. The judge noted that the fact 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 or not the misrepresentation caused damage to Fage. He suggested that two types of damage were relevant in such cases: loss of sales and erosion of the distinctiveness of the trade name Fage 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 injuncted from using the term "Greek yoghurt" on their product.

COMMENT

The judge was persuaded by a significant volume of evidence in this case, which demonstrated a naming convention applied in the UK in relation to different types of yoghurt. Greek, or Greek-style, was identified as being yoghurt that was thick and creamy owing to the method of manufacture. This took the trade name beyond geographical indication.

Of interest in this case was the judge’s affirmation that extended passing off does not protect what can be termed "badges of quality" and in this way is distinct from quality assurance regimes. This confirms that although goodwill does not necessarily indicate quality, it does indicate the attractive force of the product.