Jennifer Scott and Hana Ali, in our Corporate & Commercial team, discuss the recent case of Oatly AB v Dairy UK Ltd.
In November 2019, Oatly filed an application with the UK Intellectual Property Office (UK IPO) for the mark ‘POST MILK GENERATION’ under class 25 for t-shirts, and classes 29, 30, and 31 for various oat-based products, such as, oat-based milk substitutes.
The trademark was registered in April 2021, however, in November 2021 Dairy UK, whose mission is to promote the consumption of UK dairy products, filed an application seeking a declaration that the mark was invalidly registered.
Dairy UK’s application was grounded on section 3(3)(b) Trade Marks Act 1994 (TMA 1994) that the mark was deceptive due to its inclusion of the word ‘milk’ in relation to an oat-based drink, and secondly under section 3(4) TMA 1994 that the mark is prohibited in the UK by Article 78(2) of retained EU law, Regulation 1308/2013/EU (EU Regulation). This regulation prohibits the use of the word ‘milk’ for definitions, designations and sale descriptions for products that do not meet the definition of ‘milk’ in Annex VII, which defines milk exclusively as ‘normal mammary secretions’ and products, such as, butter and cream that are products of milk.
Initial proceedings with a UK IPO hearing officer found that the mark was not deceptive under section 3(3)(b), as the average consumer would understand the irony of the mark, noting the products departure from conventional milk. However, they did find the mark invalid under the EU Regulation, in consistency with the VSW vs Tofutown case where the Court of Justice of the European Union (CJEU) ruled that ‘milk’ could not be used to designate a purely plant-based product in marketing, even where the context indicates the plant-based origin of the product.
The High Court judge considered the term ‘designation’ in the EU Regulation and found it applied to a generic description of a product so did not extend to words used in trademarks that are not of a descriptive nature, thus overturning the UK IPO’s decision.
In the most recent stage of Oatly’s case, the court considered the meaning of the term ‘designation’ and whether it referred to a generic description of a product, thus excluding non-descriptive trademarks, or if it should be interpreted as a term referring to a product in any way, which would include trademarks.
Oatly argued that ‘designation’ should be defined as the name used at all stages of marketing. However, this was rejected by the judge who instead found ‘designation’ should have a natural meaning, such as, the description given in the shorter oxford English dictionary that defined it as "a distinctive mark or indication”, thus clearly encompassing trademarks.
As a result, the appeal by Dairy UK to reinstate the UK IPO hearing officer's declaration of invalidity was allowed. Oatly have lodged an application for permission to appeal on 2 January 2025, so we will be interested to see how this matter develops further.
This case provides a reminder of the importance in carrying out research and industry specific due diligence when considering marketing materials and the nuances in making trademark applications. The words forming a trademark should be checked for any special protection under both EU Regulations and English Law, even for UK registered trademarks. Particularly as decisions of the CJEU will continue to apply to the interpretation of EU Regulations that apply to the UK, post Brexit.
For further information or legal advice, please contact law@blandy.co.uk or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
