Fage UK Ltd & Anor v Chobani UK Ltd & Anor

A geographical and descriptive name may support extended passing off where it has acquired goodwill as denoting a reasonably defined class of products with recognisable qualities. The meaning need only exist among a significant section of the relevant public. It need not be shared by every potential consumer, and consumers need not understand the product specification.

Liability arises where use of the name for goods outside that class is likely to deceive a substantial number of relevant consumers and damage the shared goodwill. Damage includes erosion of the name’s distinctiveness. The EU scheme for protected geographical indications is exhaustive only for names within its material scope. It does not displace national passing-off protection for an unregistrable name, provided national law operates consistently with free-movement requirements.

Fage UK Ltd & Anor v Chobani UK Ltd & Anor concerned the description “Greek yoghurt”. FAGE had sold yoghurt made and strained in Greece under that description since the 1980s. Chobani began selling American-made strained yoghurt in the United Kingdom under the same description.

Briggs J held that a substantial proportion of relevant buyers understood Greek yoghurt to be a distinctive product made in Greece and that this mattered to them. He found goodwill, material misrepresentation and damage, and granted a permanent injunction: [2013] EWHC 630 (Ch).

Chobani appealed, disputing the distinctiveness and definition of the protected class. It also sought to argue for the first time that Regulation (EU) No 1151/2012 displaced or restricted domestic passing-off protection, and that deception should be assessed by reference to the average consumer.

1. Appeal dismissed unanimously. Kitchin LJ held that the trial judge was entitled to find that “Greek yoghurt” had acquired goodwill among a significant section of relevant consumers as denoting a special, thick and creamy product made in Greece. Lewison LJ agreed and emphasised that appellate courts should not disturb a trial judge’s evaluation of extensive evidence unless compelled to do so. Longmore LJ agreed with both judgments.

2. Extended passing off applies the ordinary requirements of goodwill, misrepresentation and damage to goodwill shared by a class of traders. A descriptive or geographical name may become distinctive. The claimant need not establish that every consumer attributes the protected meaning to the name, nor that consumers know the relevant manufacturing specification. It is enough that a substantial section of the relevant public understands the name as distinguishing a reasonably defined class and is likely to be deceived by its use for goods outside that class. The protected class here was sufficiently precise, and Chobani’s American-made yoghurt fell outside it.

3. The likely deception affected hundreds of thousands of adults and probably a majority of regular buyers of Greek yoghurt. The premium price and established labelling convention supported the existence of attractive goodwill. Use of the description for American-made yoghurt materially misrepresented its origin and threatened both diverted sales and erosion of the description’s distinctiveness.

4. Regulation (EU) No 1151/2012 establishes an exhaustive EU system only for geographical denominations falling within its material scope. “Greek yoghurt” could not be registered because that name, or a Greek equivalent, was not used in Greece, had no reputation there, and did not identify characteristics specifically linked to Greece. National passing-off law could therefore protect the name against deception, consistently with Articles 34–36 TFEU. The proposed average-consumer argument was not determined: it had not been raised below, might have required different evidence, and admitting it on appeal would risk prejudice. The permanent injunction was upheld.

1. Court of Appeal (Civil Division): The appeal was dismissed unanimously. The permanent injunction was upheld: [2014] EWCA Civ 5 .
2. High Court, Chancery Division: Briggs J held that Chobani’s use of “Greek yoghurt” for American-made yoghurt amounted to passing off and granted a permanent injunction: [2013] EWHC 630 (Ch) .