POST MILK GENERATION held to be invalid by the Supreme Court
The Supreme Court has handed down its decision in Dairy UK Ltd v Oatly AB, holding that Oatly’s trade mark for POST MILK GENERATION was invalid for oat-based food and drink products.
In April 2021, Dairy UK, the trade association representing the UK dairy industry, applied to invalidate Oatly’s registration for ‘POST MILK GENERATION’. The case turned on the interpretation of a regulation relating to agricultural products.
Dairy UK argued that use of the mark was prohibited by Regulation (EU) No 1308/2013. Under Article 78 of the regulation, certain ‘designations’ should only be used for certain products. These include the designation ‘MILK’ for milk and milk products intended for human consumption.
The UKIPO held that Oatly’s trade mark for POST MILK GENERATION fell foul of the regulation and was therefore invalid. The High Court overturned that, holding that the use of ‘milk’ was not prohibited here, because although Oatly’s trade mark for POST MILK GENERATION contained the word milk, it was not used to identify the product as milk. The Court of Appeal overturned the High Court and reinstated the UKIPO’s decision that Oatly’s trade mark for POST MILK GENERATION was invalid.
Oatly then appealed to the Supreme Court. The Supreme Court dismissed Oatly’s appeal.
Oatly’s main argument was that the term ‘designation’ as used in the regulation meant the name of a product, and that as it was not using the term as the name of its product, it was not caught by the regulation.
The Supreme Court rejected this. The words ‘names’ and ‘sales descriptions’ sat alongside the word ‘designation(s)’, and it was clear that they all had different meanings. With that context and purpose and looking at the natural meaning of ‘designation(s)’, it was clear that ‘[t]he prohibition bites where the designation has been used for a relevant product, and it is not necessary that it has been used as the name of the product’.
In addition, Oatly claimed that its use of POST MILK GENERATION was in reference to the milk-free quality of the product. However, the Supreme Court held it was ‘far from clear that that trade mark is describing any characteristic of the contested products. Rather, on its face, it is focussed on describing the targeted consumers… In so far as it is describing a characteristic quality of the product, it is doing so in an oblique and obscure way and is certainly not doing so ‘clearly”.
Terms such as cream, butter, cheese, yoghurt and kefir are all also covered by the regulation. Businesses should therefore carefully consider risk before using terms such as ‘oat milk’ and ‘vegan cheese’.