Court of Appeal protects “Greek yoghurt” product name in passing off claim raising issues under EU Regulation

28/01/14

The Court of Appeal today handed down judgment in a passing off claim brought by FAGE UK Ltd and FAGE Dairy Industry SA against Chobani UK Ltd and Chobani Inc.

FAGE manufactures yoghurt using the product name “Greek yoghurt” which is (i) made in Greece (ii) using traditional Greek methods (iii) without the use of additives. A unanimous Court of Appeal (Kitchin, Lewison and Longmore LJJ) upheld Briggs J’s grant of a permanent injunction in favour of FAGE, holding that only yoghurts meeting those three criteria could be described as “Greek yoghurt” in the UK market. The passing off element of the claim is of interest for the Court of Appeal’s endorsement of the view that the relevant reputation and goodwill had to exist only amongst a significant section of the relevant public, rather than all potential customers.

Chobani raised a further argument on appeal based on Regulation (EU) 1151/2012 of 21 November 2012 concerning the protection of “designations of origin” and “geographical indications” for food stuffs within the EU. Despite the fact that this point had not been heard at first instance and required amendment of its grounds of appeal, the Court of Appeal was willing to hear argument on the basis that it was necessary to decide the point in order to ensure that the court would not proceed on a false legal basis and in a manner contrary to EU law (Kitchin LJ) and because it potentially went to the jurisdiction of the court (Lewison LJ).

However, the Court of Appeal unanimously endorsed FAGE’s arguments on this point. Chobani had sought to argue that the 2012 Regulation precluded FAGE’s passing off claim, or alternatively that the national law of passing off should follow the principles enshrined in the Regulation. The Court of Appeal held that Member States were not precluded from applying their own national laws to products outside the scope of the Regulation. The only question was whether the “Greek yoghurt” designation could be classified as a “protected geographical indication” such that it fell within the scope of the Regulation. The Court of Appeal agreed with FAGE’s arguments that the implementing regulations, the system of monitoring and control by the Member State concerned, and the Commission’s guidance all supported the conclusion that the Regulation clearly contemplated the registration of a product name in the Member State of origin which would then be used throughout the EU. “Greek yoghurt” is known only as “strained yoghurt” in Greece itself and so this designation could not be within the scope of the 2012 Regulation. Lewison LJ additionally observed that it would be surprising if the effect of EU law were to prevent Member States from taking action against deceptive marketing, and if the designation in English of “Greek yoghurt” were to be given protection across all Member States.

The judgment is here.