Greek yoghurt protected by extended passing off

21 April 2014

The English Court of Appeal has dismissed the appeal of a yoghurt maker (Chobani) against a High Court decision[1] that the sale in the UK of yoghurt made in America under the designation 'Greek yoghurt' constituted extended passing off.

The Court of Appeal (Kitchin LJ giving the lead judgment) reviewed the law on extended passing off, which under certain circumstances, provides protection to traders who share collective goodwill in a trade mark.  In this case, the High Court had found that a substantial part of the relevant section of the public recognised Greek yoghurt with its characteristic thick and creamy texture as being special and originating from Greece.  To that public, the phrase was not descriptive and denoted a product with specific characteristics produced by a distinctive class of traders who could be defined with reasonable precision.

Use of the phrase by Chobani in relation to American-made yoghurt was calculated to cause confusion and deception on the part of the buying public with the intention on Chobani's part to take advantage of the cachet attached to the phrase and the premium price that could be charged.  Accordingly, this amounted to passing off.

Kitchin LJ also rejected a new point raised on appeal that Regulation No. 1151/2012 on quality schemes for agricultural products and foodstuffs (the "Regulation") and the CJEU's Decision in Budejovicky (C-478/07) precluded the grant of injunctive relief to protect geographical indications.  Whilst acknowledging that the Regulation was intended to establish a uniform and exhaustive system for the protection of PDOs and PGIs which precluded the application of a parallel system of protection under the individual laws of Member States, Kitchin J observed that it did not affect the application of national rules for the protection of geographical denominations which did not fall within the material scope of the 2012 Regulation.  The evidence had demonstrated that Greek yoghurt was not registered as either a PDO or PGI and did not meet the criteria fall within the scope of the Regulation.  The law of passing off operated to prevent confusion and deception of the public and preserve the goodwill of legitimate traders and was therefore compliant with Articles 34–36 TFEU and TRIPS.

[1] Reported in the July 2013 Edition of Food Law Digest.