Comment

The Court of Appeal, in upholding the decision of the High Court (click here for the IP Bulletin Summer 2011), has confirmed that Greek Yoghurt sold in the UK must be made in Greece and must be made to the strained method.

The Appeal

Chobani marketed strained yoghurt (which was made in the USA) as Greek Yoghurt in the UK. Fage sold its brand of Total strained yoghurt in the UK, a yoghurt made in Greece and marketed as Greek Yoghurt.

Chobani's had argued that the phrase "Greek yoghurt" was a general term descriptive of a broad range of products including yoghurt made in the USA and that Fage had failed to prove that the phrase had become sufficiently distinctive of a defined category of goods, namely yoghurt made in Greece.

The Court of Appeal said that the trial judge was entitled to find that a substantial proportion of UK yoghurt consumers believed Greek Yoghurt came from Greece and that it was a specially made product (as supported by a labelling convention over a number of years, the premium price paid for the product by UK consumers and evidence from various trade witnesses). The Court said that the term Greek Yoghurt was no longer purely descriptive and had come to denote a product of a particular kind - strained yoghurt made in Greece.

The Court ruled not only that Chobani was liable for extended passing off but also that Chobani's argument that the court had no power to grant or was precluded from granting injunctive relief to protect geographical indications, such as Greek yoghurt, other than in accordance with the provisions of Council Regulation (EU) 1151/2012 (protection of designations of origin) failed.

The 2012 Regulation on protection of designations of origin ("2012 Regulation") protects geographical designations for food products. The protected designations relate to 'origin' of products (PDOs) and 'geographical indications' (PGIs) and are intended to provide consumers with clear information about products linked to geographical origin so as to allow consumers to make informed choices. Chobani argued that Greek Yoghurt was a geographical denomination under the 2012 Regulation and, as such, the English Court did not have jurisdiction to grant injunctive relief under the Regulation. The Court of Appeal disagreed and said that to be protected under the Regulations, there had to be a link between the characteristics of the product and its geographical origin. The product must be used within the EU Member State in question and must have a reputation in that State. This was not the case with Greek Yoghurt. There also existed language registration requirements which were not fulfilled in this case. Accordingly, the term Greek Yoghurt could not be protected under the 2012 Regulations. (Lewison LJ said it would be surprising if the name Greek Yoghurt (in English) was to be given protection across all EU Member States.) The Court also said that the 2012 Regulation did not preclude systems of national protection for geographical denominations falling outside its scope.

As a result of the ruling, Chobani is prevented from selling in the UK a strained yoghurt made in the US as "Greek Yoghurt". Leave to appeal to the Supreme Court was refused.

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