Extended Passing Off in the UK: “Greek Yoghurt” v “Greek style Yoghurt”

02 April 2013

Audrey Horton

Fage UK Ltd v Chobani UK Ltd [2012] EWHC 3097 (Ch) Briggs J and [2012] EWHC 3755 (Ch) Hildyard J.

Fage, the owner of the famous TOTAL Greek Yoghurt brand, has sued American company Chobani for passing off by marketing and selling its yoghurt, made in the United States, as “Greek yoghurt” in the UK.  Fage (which has 95% of the British market for Greek yoghurt) initially applied for an interim injunction. 

At this first hearing the judge (Briggs J) held that the evidence showed that Fage had a real prospect of establishing at trial that (1) yoghurt sold in the UK as “Greek yoghurt” does all or substantially all originate from Greece; (2) that it had the qualities alleged, i.e. that it is thick and creamy by a means of straining but without additives; and (3) that Greek yoghurt commands a significantly higher price in the market than Greek style yoghurt and that the phrase has an inherent goodwill or pulling power independent of any particular maker or seller’s name.  It followed that that there was a real prospect of Fage succeeding in its claim that for Chobani to sell yoghurt made in the USA as Greek yoghurt in the UK would amount to “extended passing off”.  Such a claim may arise in the UK where products have a certain class of attributes, a particular cachet or origin, in which case passing off may occur even if the mode of processing the product is the same.  Analogous cases were J Bollinger SA v Costa Brava Wine Co Ltd (No. 3) [1960] in relation to “champagne”, and in Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] in relation to “Swiss chocolate”.  The concept of extended passing off was also applied in the Vodka / Vodkat decision of Diageo North America Inc v Intercontinental Brands [2010] in relation to “vodka”.

The judge held that the balance of convenience favoured granting such an injunction. Following undertakings by Chobani (pending full trial of the action) to sell its products re-labelled as “Greek strained yoghurt”, directions were given for a speedy trial.

At the second hearing the judge (Hildyard J) considered Chobani’s request to adduce survey evidence.  Following a pilot survey, Chobani sought permission to carry out a further survey and to adduce evidence from the survey, including evidence from respondents to the survey. 

Fage’s case, citing the 3 key elements of passing off in the UK, was that: (1) there is valuable goodwill and reputation in the name “Greek Yoghurt” as denoting a particular type of yoghurt coming from Greece; (2) Fage owned a share in that goodwill; and (3) that goodwill will be damaged by the Chobani’s sale of a product which is falsely described by the name because its product is not made in Greece but in the USA.  In response Chobani contended that the yoghurt they sell can properly be called “Greek Yoghurt”: they said that Greek Yoghurt connotes a yoghurt with a particular consistency but does not denote that the product is made in Greece from Greek milk. An analogy might be “English mustard”, the characteristic being colour, taste and consistency, not origin.

The judge accepted that a properly designed and administered survey could provide useful evidence as to the issue at the heart of Fage’s case: namely whether a substantial proportion of consumers or potential consumers of Greek yoghurt would regard a fundamental characteristic or attribute of “Greek Yoghurt” as being that the yoghurt must have been made in Greece with Greek milk, so that yoghurt manufactured elsewhere cannot be Greek yoghurt.  Although he held that a full survey could assist in establishing whether or not that was the case, he also said Chobani would be at their own risk as to costs, and he would consider whether the results of the survey and evidence from respondents could be adduced at a later date.  In this regard the judge slightly departed from the new guidelines for survey evidence set out by the Court of Appeal in Marks & Spencer plc v Interflora Inc [2012].

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