Case Law: Validity of 'Milk' Trademark for Plant-Based Products Clarified

Citation: [2023] EWHC 3204 (Ch)
Judgment on


In the case of Oatly AB v Dairy UK Ltd, the principal issue at stake was the validity of a trademark registration bearing the term “milk” for plant-based products. Oatly AB (Appellant) challenged the Intellectual Property Office (IPO) decision to invalidate their trademark “POST MILK GENERATION” under section 3(4) of the Trade Marks Act 1994. The decision hinges on the interpretation of the term “designation” and its use concerning milk and milk products within Regulation (EU) No 1308/2013 and its Annexes, specifically Annex VII Part III.

Key Facts

The Appellant sought to register “POST MILK GENERATION” for various goods across different classes, prominently featuring oat-based alternatives to dairy products. After initial acceptance by the IPO and subsequent registration, Dairy UK Ltd (Respondent) contested the trademark due to the Appellant’s inclusion of the term “milk” in non-dairy products, claiming it is prohibited by EU Regulation. The IPO agreed, declaring the trademark invalid for the goods in classes 29, 30, and 32—pivotal to the Appellant’s product range. The Appellant appealed this decision.

The case revolves around these key legal principles and provisions:

  1. Definition of “Milk” and Related Terms in the EU Regulation:

    • According to Regulation (EU) No 1308/2013, “milk” has a narrow definition, being the “normal mammary secretion” from milking animals. The Regulation restricts the term “milk” and certain other names explicitly to dairy products.
  2. Designation versus Trademark:

    • The court noted that there is a distinct difference between designations, which refer to product descriptors, and trademarks, which signal the trade origin of goods. A trademark, in this sense, is not intended to be a product descriptor but is a unique identifier of the source company or brand.
  3. Prohibition of ‘Milk’ in Non-Dairy Products:

    • Point 5 of Part III of Annex VII elucidates that designated terms for milk and milk products are prohibited for marketing non-dairy products unless they fall under exceptions for historical or characteristic quality use.
  4. Consumer Perception:

    • Emphasized in this case is the consumer’s perception of the market. The IPO’s decision hinged on whether the term “POST MILK GENERATION” implied a dairy association. The court found that the trademark did not deceive consumers into believing the associated products were dairy-based.
  5. Nature of Trade Marks:

    • The relevant directives and regulations underscore the nature of trademarks as distinct from names, sales descriptions, or designations.


Mr. Justice Richard Smith found that the IPO Hearing Officer erred by interpreting the use of “milk” in the “POST MILK GENERATION” trademark as a designation prohibited by the Regulation. His analysis departed from the IPO’s interpretation, noting that the trademark did not seek to describe the products as dairy products but served as an indicator of origin for the Appellant’s dairy alternatives. Consequently, the appeal was allowed, and the earlier decision to invalidate the trademark for the goods in classes 29, 30, and 32 was set aside.


The case effectively distinguishes between the regulatory control over the designation of products and the distinct nature of trademarks. The judgement clarifies that trademarks containing terms like “milk” do not necessarily fall into the purview of prohibitions against non-dairy products using dairy-related designations if they do not purport to describe or identify the products as dairy. Instead, trademarks, by their nature, serve as unique identifiers of a trade source and are therefore not inherently descriptive of product characteristics. The decision upheld the validity of the Appellant’s trademark, reinforcing the legal boundary between product designations and trademarks, which will have wider implications for trademark law and the marketing of plant-based products in the UK and potentially the EU.