Dairy UK Limited v Oatly AB
[2024] EWCA Civ 1453
Oatly AB v Dairy UK Ltd
14 December 2023
[2023] EWHC 3204 (Ch)
High Court
Oatly's trademark "POST MILK GENERATION" for plant-based milk was challenged. A court decided the trademark didn't illegally use the word "milk" because it doesn't claim the product *is* milk, but rather targets a consumer group that doesn't drink dairy milk.
Key Facts
- •Oatly AB (Appellant) appealed a decision of the Intellectual Property Office (IPO) declaring their UK trade mark registration no. 3 445 440 for "POST MILK GENERATION" invalid under section 3(4) of the Trade Marks Act 1994.
- •The IPO found the mark offended against Article 78(2) of Regulation (EU) No 1308/2013 (the Regulation) and Part III of Annex VII, prohibiting the use of "milk" for non-mammary secretion products.
- •The mark was registered for various oat-based products in classes 29, 30, and 32, and t-shirts in class 25.
- •The Hearing Officer dismissed deception claims under section 3(3)(b) but upheld the objection under section 3(4) for classes 29, 30, and 32.
- •The Appellant argued the mark was not descriptive, but ironic and distinctive, indicating a unique trade source, and that the Regulation did not apply to trade marks in this context.
Legal Principles
Section 3(4) of the Trade Marks Act 1994 prohibits trade mark registration if its use is prohibited by any enactment or rule of law.
Trade Marks Act 1994
Article 78(2) and Annex VII, Part III, of Regulation (EU) No 1308/2013 preclude the term 'milk' and designations reserved for milk products from being used to designate purely plant-based products in marketing or advertising, even with clarifying terms, unless listed in Annex I to Decision 2010/791.
Regulation (EU) No 1308/2013
Directive 2000/13/EC concerns the labelling, presentation, and advertising of foodstuffs, aiming to ensure consumers understand the true nature of products.
Directive 2000/13/EC
Regulation (EC) No. 1234/2007 and Commission Decision 2010/791/EU provide further definitions and designations related to milk and milk products, including exceptions for traditionally used terms.
Regulation (EC) No. 1234/2007, Commission Decision 2010/791/EU
A trade mark can operate as both a designator of goods and an indicator of trade origin.
Respondent's arguments
Outcomes
The appeal was allowed.
The court found the Hearing Officer construed the prohibition in point 5 of the Regulation too widely. The mark "POST MILK GENERATION", while containing the word "milk", did not designate the goods as milk. It was deemed indicative of the Appellant's products as being for those who no longer consume dairy milk, not a designation for milk products under the Regulation. The court also considered the Hearing Officer's finding that the mark was not deceptive. Therefore, neither point 5 nor point 6 of the Regulation was engaged.
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