The Court of Appeal has held that a yoghurt maker cannot sell its American-made products as “Greek yoghurt” in the UK.
An extended passing off action may be brought by a class of traders sharing collective goodwill in a trade mark. It includes five elements:
A business selling a class of goods to which the trade name applies.
The class of goods is clearly defined, and in the minds of the public, or a section of the public, the trade name distinguishes that class from other similar goods.
Goodwill is attached to the trade name because of the reputation of the goods.
The claimant, as a member of the class of traders, owns goodwill of substantial value.
The claimant has suffered, or is likely to suffer, substantial damage to its goodwill due to the defendants selling goods that were falsely described by the trade name (Erven Warnink BV v J Townend & Sons Ltd  RPC 31).
Council Regulation 1151/2012/EU on quality schemes for agricultural products and foodstuffs (the Regulation) covers the protection of designations of origin and geographical indications (PGIs) for foodstuffs in the EU.
The European Court of Justice has held that a court has no power to grant injunctive relief to protect geographical indications other than under or in accordance with the Regulation (Budejovicky Budvar NP v Rudolf Ammersin GmbH, C-478/07).
F produced its “Total Greek yoghurt” in Greece and sold it in the UK. In 2012, F had 95% of the UK market share. Another group of producers, C, then introduced its American-made yoghurt “Chobani Greek yoghurt” into the UK. F brought proceedings for extended passing off, arguing that it owned goodwill existing in "Greek yoghurt", a yoghurt made in Greece in a traditional way.
The High Court found in F’s favour. On the evidence, a substantial proportion of UK buyers of Greek yoghurt thought that it was made in Greece and this was important to them.
C appealed, arguing that the phrase lacked the necessary singularity to distinguish it from other products and that, following Budejovicky Budvar NP, the court had no jurisdiction to grant injunctive relief to protect “Greek yoghurt” because it had not been registered under the Regulation.
The court dismissed the appeal and held that there was extended passing off.
The court rejected C’s argument on lack of distinctiveness because the High Court’s findings showed that, to Greek yoghurt buyers, the term was no longer purely descriptive and had come to denote a product of a particular kind. A phrase qualifies for protection if a significant section of the public attribute a meaning to it that is more than descriptive of the place of manufacture. There was no requirement for the public to know the specification to which Greek yoghurt was made. The class of traders was also defined with reasonable precision, being all traders whose yoghurt was made in Greece according to defined criteria.
The court held that C‘s use of the phrase “Greek yoghurt” for yoghurt not made in Greece was calculated to cause deception and confusion and to lead members of the public to buy it thinking they were buying the genuine article, (that is,yoghurt having the characteristics with which they were familiar and which had been made in Greece). C had acted with the intention of taking advantage of the cachet attaching to the phrase which had been generated by F and other traders, and so sold its product at the premium price which Greek yoghurt commanded. This was an activity in respect of which the law ought to provide F a remedy and the judge was right to hold it amounted to passing off.
The court rejected C’s argument that it could not grant or was precluded from granting injunctive relief. The Regulation only applied if “Greek yoghurt” was registered as a PGI in the languages that are or were historically used to describe the relevant product in the defined geographical area; it did not apply as the English phrase “Greek yoghurt” was not used in Greece. The court also held that the law of passing off operated compliantly with the Regulation.
This decision provides a comprehensive overview of extended passing off, including how the class of protected products and class of traders should be defined. The decision upholds the reasoning in Chocosuisse, which has been confirmed as setting out the guidelines for claims of this kind (Chocosuisse Union des Fabricants Suisses de Chocolat and others v Cadbury, www.practicallaw.com/2-100-9956). The significance of the factual findings on the evidence is a key element of this, and every, passing off action. The survey evidence allowed by the trial judge was significant, despite recent judicial comments casting doubt on the value of such evidence (see Briefing “Surveys in trade mark infringement cases: lessons from Marks & Spencer v Interflora”, www.practicallaw.com/1-525-3850).
The court’s interpretation of the scope of the Regulation is also useful as such matters rarely come before the English courts.
Case: Fage UK Ltd and another v Chobani UK Ltd and another  EWCA Civ 5.
First published in the March 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.