Keep Milking It – Oatly Ab v Dairy UK Ltd, [2023] EWHC 3204 (Ch)

In 2019, the company ‘Oatly’, known for their oat-based milk alternatives, filed an application for POST MILK GENERATION (the “Trade Mark”) in classes 29, 30 and 32. Dairy UK Ltd claimed in 2020 that using ‘milk’ in a trade mark used for a dairy-free alternative – and not a “mammary secretion” – is misleading. The UKIPO declared the trade mark invalid under EU regulation, after Dairy Milk Ltd filed an application for a declaration of invalidity. The High Court took a suitably alternative approach by overturning this declaration when Oatly appealed this decision.

Regulation (EU) 1308/2013 Article 78(2) and Annex VII (the EU Regulation) states that “milk” may only be used in definitions, designations and sales descriptions for products that constitute mammary secretions. These were the constraints that the UKIPO applied in the first instance. Oatly argued that the Trade Mark was not a definition, designation or sales description, but rather a reference to the consumer: it did not insinuate that the product was milk or a “mammary secretion” and therefore fell outside of the EU Regulation.

The High Court agreed with Oatly. Mr Justice Richard Smith cited the TofuTown case as a reminder that the EU Regulation was concerned with ensuring that designations and descriptions provided certainty of the product that is being sold. The Judge found that this was not applicable in this case because the Trade Mark alludes to a consumer who drinks milk alternatives rather than the product itself.

The Hight Court agreed with Oatly that the EU Regulation had been applied too broadly and allowed the appeal.

Comment

It is key that businesses selling plant-based goods understand that they cannot use animal-based words to describe their products in their trade marks. The trade mark cannot be deceptive – and brand owners should seek advice if the understanding could be blurred. This case does, however, demonstrate the onus placed on the application of a word in the context of the industry, rather than a strict application of the word’s meaning. It confirms the creative scope for plant-based businesses to continue milking animal-based products in their trade marks.