Origin and quality of products – it’s all Greek to me

When using words that designate a certain origin or the qualities of a particular product to sell your goods, you should proceed cautiously, as the US yoghurt manufacturers Chobani recently discovered. When Chobani launched its US yoghurt in the UK market calling it ‘Greek’, it was sued by Greek yoghurt manufacturer, Fage, who argued that the use of the word ‘Greek’ together with the word ‘yoghurt’ should be limited to circumstances where the yoghurt actually originated from Greece and was made in a specific way. The UK High Court and Court of Appeal agreed with Fage and Chobani has been ordered to cease calling its yoghurt ‘Greek’. It is now advertised as ‘strained yoghurt’.

On 28 January 2014, the UK Court of Appeal handed down its judgment in the case of Fage UK Ltd and another v Chobani UK and Chobani Inc. The case was a claim in the common law right of ‘passing off’ concerning the use of the phrase ‘Greek yoghurt’, a so-called ‘extended form of passing off’ case where parties who have a particular interest in criteria attributed by the public to a word or words that designate origin or quality of goods object to use by others which does not meet those same criteria. Of course, it is a matter of evidence as to whether or not the use of words such as ‘Greek yoghurt’ have come to denote a distinctive type of yoghurt made in Greece such that their use to describe yoghurt not made in Greece would amount to a misrepresentation and cause deception and damage amounting to a successful ‘passing off’ claim.

In the High Court, Briggs J held that at the relevant time, a substantial proportion of the relevant public thought that Greek yoghurt was made in Greece and that this mattered to them such that to describe yoghurt not made in Greece in this way was a material misrepresentation. Chobani argued in the High Court and on appeal that Fage had not established that Greek yoghurt had become sufficiently distinctive of a defined category of goods. It also argued on appeal that the Court had no jurisdiction to order the injunction against Chobani other than pursuant to Regulation (EU) 1151/2012 of 21 November 2012 concerning the protection of “designation of origin” and “geographical indications” for foodstuffs within the EU which it had not applied.

The Court was satisfied that yoghurts sold in the UK that did not originate in Greece but had a thick and creamy consistency and had been sold under the phrase ‘Greek style yoghurt’. Moreover, Chobani’s Vice-President for International Business Development had been warned by his advisers, in advance of his launch in the UK, that use of the word “Greek” alone would signify to UK consumers that the yoghurt originated in Greece. The Court of Appeal (Kitchen LJ gave the leading judgment) held that the trial judge had been entitled to conclude that a substantial proportion, and probably a clear majority, of the buyers of Greek yoghurt believed that it came from Greece and it conveyed to them that the yoghurt was in some way special. The evidence supported this conclusion. It further held that the 2012 Regulations did not preclude a national law such as ‘passing off’ from prohibiting potentially misleading use of a geographical indication of source where there is no link between the product’s characteristics and its geographical provenance.

Effectively, Fage achieved protected designation of origin and protected geographical indication status for Greek yoghurt in the UK without having to go through the formal application procedure required by the relevant regulations. This might be considered a back-door route, although it does only apply to one Member State and, given the case brought and the weight of the evidence Fage deployed regarding UK consumer perceptions, it was not an easy or inexpensive route to a result. For those businesses in the foodstuffs market, it is important to take note of the potential intellectual property rights to particular geographical indications and designations of origin so as to protect one’s own products and ensure no inadvertent and costly infringements of others’.