Fage UK Ltd & Anor v Chobani UK Ltd & Anor

A descriptive geographical name may support extended passing off when it has acquired goodwill as denoting a reasonably defined class of products with recognisable characteristics. It is enough that a significant section of the relevant public understands the name in that distinctive sense and that a substantial number would be deceived.

The claimant must establish goodwill, misrepresentation and actual or probable damage. Protection may extend to preventing erosion of the name’s distinctiveness. The protected class need not be defined or controlled by legislation.

The EU scheme for protected designations and geographical indications is exhaustive only for names within its material scope. National passing-off protection remains available for other geographical names, provided that it complies with EU free-movement law.

FAGE sold yoghurt made and strained in Greece under the description “Greek yoghurt”. Chobani began selling in the United Kingdom yoghurt made and strained in the United States under the same description. FAGE alleged extended passing off, relying on a longstanding United Kingdom labelling convention under which “Greek yoghurt” denoted strained yoghurt made in Greece.

Briggs J held that a substantial proportion of buyers understood the description to denote yoghurt made in Greece, regarded that characteristic as material and were therefore likely to be deceived. He granted a permanent injunction: [2013] EWHC 630 (Ch).

Chobani appealed, challenging the distinctiveness and precision of the description. It also sought to argue for the first time that Regulation (EU) No 1151/2012 displaced or restricted domestic passing-off protection.

1. Appeal dismissed. The judge was entitled to find that “Greek yoghurt” had acquired goodwill as denoting, to a significant section of the relevant public, a special class of thick and creamy yoghurt made in Greece. Its reputation did not need to extend to every potential consumer.
2. Extended passing off is governed by the ordinary requirements of goodwill, misrepresentation and damage. The claimant must identify with reasonable precision the protected class of products and participating traders. The product must possess recognisable characteristics which distinguish it in the market and motivate custom. Neither detailed consumer knowledge of the manufacturing specification nor legal regulation of the geographical description is essential.
3. The established labelling convention corresponded sufficiently with the protected class. The class comprised traders supplying yoghurt made in Greece according to the pleaded specification, subject to each trader acquiring a share of the goodwill. Chobani’s product fell outside the class because it was not made in Greece. Its use of the description was calculated to deceive a substantial number of consumers and exploit the description’s cachet and premium price.
4. The law is concerned with the substantial portion of the relevant public who would be deceived. A claim does not fail because other consumers understand the description differently or would not be misled. Damage may include erosion of the singularity and distinctiveness of the shared name.
5. The proposed “average consumer” argument was not suitable for determination for the first time on appeal. It might have affected the evidence and cross-examination, and allowing it would risk prejudice. The court therefore expressed no final view on whether that EU test differs materially from the domestic test.
6. Regulation (EU) No 1151/2012 did not displace the claim. Its system is exhaustive for designations capable of registration under it, but national law may protect geographical denominations outside its scope against misleading use. “Greek yoghurt” could not be registered because that name was not used in Greece, and no corresponding reputation existed there; the product was known there as strained yoghurt. Domestic passing off could therefore operate, subject to compliance with articles 34–36 TFEU.
7. Lewison LJ added that appellate courts should not interfere with a trial judge’s primary or evaluative findings of fact unless compelled to do so. Longmore LJ agreed with both judgments.

1. Court of Appeal (Civil Division): The defendants’ appeal was dismissed unanimously: [2014] EWCA Civ 5.
2. High Court, Chancery Division: Briggs J upheld the extended passing-off claim and permanently restrained the defendants from describing their American-made product as Greek yoghurt: [2013] EWHC 630 (Ch).