In Fage UK Ltd & Another v Chobani UK Ltd & Another  EWHC 630 (Ch), the High Court has upheld an extended passing-off action brought by the distributor and manufacturer of a yoghurt labelled as “Greek yoghurt” which was manufactured in Greece against the distributor and manufacturer of a yoghurt manufactured in the USA and also labelled as “Greek yoghurt”.
The question for the Court was whether the phrase “Greek yoghurt” had, when used in the UK marketplace, come to have attached to it a sufficient reputation and goodwill as denoting a distinctive type of yoghurt made in Greece, so that the use of the same phrase to describe yoghurt not made in Greece, however otherwise similar, would involve a damaging misrepresentation sufficient to support a claim in passing-off.
Whilst both the parties’ yoghurts were of a type which may loosely be described as “thick and creamy”, the Court concluded that a substantial proportion of those who bought Greek yoghurt in the UK thought that it was made in Greece, and that the proportion of those Greek yoghurt buyers to whom it mattered was substantial. It was irrelevant that Greek yoghurt buyers formed a modest proportion of yoghurt eaters as a whole.
The Court noted that the best evidence of the subsistence of goodwill in the phrase “Greek yoghurt” was (1) the fact that a labelling convention which respects its Greek place of manufacture as being relevant to customers had been uniformly observed by yoghurt producers in the UK market for over 25 years; (2) the unanimity of the trade witnesses in that respect; and (3) the fact that, on average, such labelled products were able to command a premium price.
If a sufficient goodwill is shown to be attached to the phrase “Greek yoghurt” among customers who believe that it is made in Greece, and that this mattered to them, then the use of Greek yoghurt to describe yoghurt not made in Greece plainly involved a material misrepresentation. This meant that the Claimants were entitled to seek a permanent injunction to stop the Defendants passing off its US made yoghurt in the UK under the label “Greek yoghurt”.
This judgment is in line with the principle of Chocosuisse Union Des Fabricants Suisse de Chocolat v Cadbury Ltd  RPC 826,  ETMR 1020 (where the geographical description of the product in question was Swiss chocolate) in that consumers did not have to know the manufacturing process of the product. Here, it was immaterial that the Defendants’ yoghurt was made by the straining method commonly used for the production of Greek yoghurt. The Courts have in recent years maintained the rights in products which designate the area in which they are made, but in most instances, as in this case the assessment of evidence and findings of fact are critical to the success or failure to these types of extended passing off actions.
Simon Miles is head of intellectual property at Edwin Coe LLP, he is a solicitor and a trade mark attorney.
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