Factual and Procedural Background
This is a passing off case concerning the use of the phrase "Greek yoghurt" in the UK market. The claimants, collectively "Company A", have since the mid-1980s imported and sold yoghurt made in Greece under the brand name TOTAL, described as Greek yoghurt. Their product accounted for over 95% of UK sales by value of yoghurt described as Greek yoghurt in 2012.
The defendants, collectively "Company B", established in 2005 in the USA, introduced in September 2012 yoghurt described as Greek yoghurt but made in the USA. Company A sought and obtained an interim injunction against Company B, which was later replaced by undertakings to the court. The trial was expedited and took place in February 2013.
The trial judge found that a substantial proportion of UK purchasers of Greek yoghurt believed it to be made in Greece, and that this belief mattered to them, making the use of the phrase "Greek yoghurt" to describe non-Greek-made yoghurt a material misrepresentation causing deception and damage. Consequently, a permanent injunction was granted restraining Company B from passing off its American-made yoghurt as Greek yoghurt.
Company B appealed, arguing that "Greek yoghurt" is a generic term apt to describe a broad range of products including theirs, and that Company A failed to prove that the phrase had acquired sufficient distinctiveness to support a passing off claim. Company B also sought to raise a new legal point based on Regulation (EU) 1151/2012 concerning geographical indications, contending that the court lacked power to grant injunctive relief outside the Regulation's framework.
Legal Issues Presented
- Whether, by September 2012, the phrase "Greek yoghurt" had acquired distinctiveness in the UK market as denoting a type of yoghurt made in Greece, such that its use to describe non-Greek-made yoghurt amounted to passing off.
- Whether the court has jurisdiction to grant injunctive relief to protect geographical indications such as "Greek yoghurt" outside the framework of Regulation (EU) 1151/2012.
- Whether the traditional passing off test or the "average consumer" standard derived from EU law applies in assessing deception in cross-border trade cases involving geographical indications.
Arguments of the Parties
Appellant's Arguments (Company B)
- The phrase "Greek yoghurt" is a generic term apt to describe a broad range of products, including their American-made yoghurt.
- Company A failed to prove that "Greek yoghurt" had acquired sufficient distinctiveness in the UK to support a passing off claim.
- The court lacks jurisdiction to grant injunctive relief to protect geographical indications except pursuant to Regulation (EU) 1151/2012.
- In cross-border trade, the risk of consumer deception must be assessed by reference to the average consumer who is reasonably well-informed, observant, and circumspect, a test not applied by the trial judge.
- The class of products described as "Greek yoghurt" is imprecise and lacks a clear specification, unlike other protected geographical indications.
Respondent's Arguments (Company A)
- "Greek yoghurt" in the UK market has acquired a distinctive meaning denoting yoghurt made in Greece by a traditional straining process without additives, generating substantial goodwill.
- Company B's use of the phrase for yoghurt not made in Greece amounts to a material misrepresentation causing deception and damage to Company A's goodwill.
- The Regulation (EU) 1151/2012 does not preclude national law claims for passing off where the product name does not fall within the Regulation’s scope, as "Greek yoghurt" is not used or recognized as such in Greece.
- The traditional passing off test remains applicable and appropriate, and it is not necessary that the entire public or average EU consumer share the perception.
- The class of protected products is clearly defined with reasonable precision by reference to origin, manufacturing process, and absence of additives.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| J Bollinger & Ors v Costa Brava Wine Co Ltd (No 2) [1961] 1 WLR 277 ("Spanish Champagne") |
Geographical names can acquire distinctiveness and goodwill; misrepresenting a product as from a protected region constitutes passing off. |
Used to illustrate that "champagne" denotes a product from a defined region and that misuse of the name causes deception and damage. |
| Vine Products Ltd v Mackenzie & Co Ltd [1969] RPC 1 ("British Sherry") |
Necessity to define with reasonable precision the geographical area that gives a product its name; protection of goodwill in geographical names. |
Confirmed the principle of geographic precision and the need to prevent misrepresentation of origin. |
| Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd [1979] AC 731 ("Advocaat") |
Extended passing off protects shared goodwill in a class of products; five elements required for passing off; descriptive names can acquire distinctiveness. |
Applied to confirm that geographical or descriptive names can be protected if they have acquired goodwill and misrepresentation causes damage. |
| Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 ("Jif lemon") |
Essential elements of passing off restated: goodwill, misrepresentation, and damage. |
Affirmed the importance of consumer association with the get-up or description leading to deception and damage. |
| Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] RPC 826 |
Descriptive geographical names must acquire a secondary meaning among a significant section of the public to be protected. |
Confirmed that "Swiss chocolate" was understood by a significant section of the public to denote chocolate made in Switzerland, supporting passing off claim. |
| Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWCA Civ 920 |
Limits on extended passing off claims; concerns regarding anti-competitiveness; necessity to establish goodwill and misrepresentation. |
Referenced to acknowledge concerns but affirmed the necessity of established goodwill and deception for protection. |
| Snell v Unity Finance Co Ltd [1964] 2 QB 203 |
New points of law affecting jurisdiction may be raised on appeal if no new facts are required. |
Applied to consider whether the court had jurisdiction to grant relief outside the Regulation framework. |
| Case C-478/07 Budejovicky Budvar NP v Rudolf Ammersin GmbH [2009] ECR I-7721 |
EU Regulation 1151/2012 provides an exhaustive system for protection of geographical indications, precluding parallel national protection within its scope. |
Held that national law cannot provide protection inconsistent with the Regulation for registered indications; however, protection outside the Regulation's scope remains possible. |
| Case C-312/98 Schutzverband gegen Unwesen in der Wirtschaft EV v Warsteiner Brauerei Haus Cramer GmbH & Co KG [2000] ECR I-9187 |
National laws prohibiting misleading use of geographical indications outside the Regulation's scope are not precluded. |
Supported the view that national passing off law can apply to geographical indications not covered by the Regulation. |
| Case C-220/98 Estee Lauder Cosmetics GmbH v Lancaster Group GmbH [2000] ECR 1-135 |
The "average consumer" test applies in assessing deception for free movement of goods purposes. |
Referenced in discussion of whether this test should replace traditional passing off tests in cross-border cases. |
Court's Reasoning and Analysis
The court began by examining the factual matrix, confirming the existence of a UK labelling convention whereby "Greek yoghurt" denoted yoghurt made in Greece by straining without additives, distinguished from "Greek style yoghurt" made outside Greece using thickening agents. This convention had been uniformly observed for over 25 years by major suppliers, including Company A and its competitors.
The court found that a substantial majority of purchasers of Greek yoghurt in the UK believed the product to be made in Greece and that this belief was significant to their purchasing decisions. This perception conferred a substantial goodwill on the phrase "Greek yoghurt". The court rejected the argument that the phrase was too imprecise or multivalent to support a passing off claim, noting that distinctiveness need only be established among a significant section of the relevant public, not the entire public.
Applying established principles from leading cases, the court confirmed that the tort of extended passing off protects shared goodwill in a class of goods distinguished by a name with a reputation and recognisable qualities. The court found that all five elements required for passing off were present: goodwill, misrepresentation by Company B, deception of a substantial number of consumers, and resulting damage to Company A's goodwill.
Regarding the new point based on Regulation (EU) 1151/2012, the court held that the phrase "Greek yoghurt" does not fall within the Regulation’s scope because it is not used or recognized as such in Greece, where the product is known as "strained yoghurt". Consequently, the Regulation does not preclude the application of national passing off law in this case. The court further held that the Regulation’s exhaustive system applies only to registered geographical indications, and no registration or application for "Greek yoghurt" exists.
The court declined to adopt the "average consumer" test from EU law as a replacement for the traditional passing off test in this appeal, noting that the point was not raised at trial and that allowing it on appeal would prejudice Company A. The court expressed no final view on whether the average consumer test might apply generally in the future.
In sum, the court found no error in the trial judge's fact-finding or legal conclusions and upheld the injunction granted against Company B.
Holding and Implications
The court DISMISSED THE APPEAL, affirming the trial judge's decision that Company B's use of the phrase "Greek yoghurt" for yoghurt not made in Greece constituted passing off.
The ruling confirms that a geographical phrase may acquire distinctiveness and goodwill through consistent use and consumer perception within a particular jurisdiction, even if the phrase is not recognized or used in the place of origin. It affirms the applicability of traditional passing off principles to protect such goodwill against misrepresentation and deception.
The court also clarified that Regulation (EU) 1151/2012 does not displace national passing off law for geographical indications outside its scope, preserving the availability of national remedies in such cases.
No new precedent was established regarding the applicability of the average consumer test, as the court declined to decide on this point given its late introduction.