Oatly AB v Dairy UK Ltd
[2023] EWHC 3204 (Ch)
Dairy UK Limited v Oatly AB
29 November 2024
[2024] EWCA Civ 1453
Court of Appeal
Oatly used the word "milk" in its trademark for plant-based milk. A court case decided that using "milk" in this way is illegal because it's misleading, even though the trademark isn't outright deceptive. The court ruled against Oatly, meaning Oatly can't use the trademark as originally registered for those products.
Key Facts
- •Oatly AB registered the trademark "POST MILK GENERATION" for various oat-based products and t-shirts.
- •Dairy UK challenged the validity of the trademark, arguing it was deceptive and its use was prohibited under the Trade Marks Act 1994 and EU Regulation 1308/2013.
- •The hearing officer found the trademark invalid for certain goods under section 3(4) of the 1994 Act, relating to EU Regulation 1308/2013.
- •Oatly appealed to the High Court, which overturned the hearing officer's decision.
- •Dairy UK appealed the High Court's decision to the Court of Appeal.
Legal Principles
Interpretation of EU Regulation 1308/2013, specifically Article 78(2) and Annex VII, Part III, regarding the definition of "designation" in the context of marketing milk and milk products.
EU Regulation 1308/2013
Interpretation of section 3(3)(b) and 3(4) of the Trade Marks Act 1994 concerning deceptive trademarks and trademarks prohibited by enactment.
Trade Marks Act 1994
The principle of proportionality in EU law, in the context of restrictions on the use of designations for plant-based products.
VSW v TofuTown judgment
The meaning of “designation” in the context of trade mark law and its potential overlap with “sales description” and “definition.”
Article 78(2) and Annex VII, Part III of the 2013 Regulation
Outcomes
The Court of Appeal allowed Dairy UK's appeal.
The Court of Appeal held that the High Court judge erred in interpreting "designation" in the 2013 Regulation as excluding trademarks. The court found that "designation" includes parts of a trademark, and that the use of "milk" in the trademark "POST MILK GENERATION" was prohibited under the 2013 Regulation for the specified goods. The respondent's notice argument, which claimed the trademark fell under an exception in the 2013 Regulation because it described a characteristic quality, was rejected.
The hearing officer's declaration of invalidity was reinstated.
The Court of Appeal agreed with the hearing officer's interpretation of the relevant EU Regulation, concluding that the trademark’s use was prohibited given its inclusion of the term “milk” in relation to non-milk products.
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