Oatly AB v Dairy UK Ltd

The prohibition on using protected dairy designations for non-dairy products applies where the term is used to designate the product as milk, a milk product or a composite product containing milk as an essential part. Mere inclusion of the word “milk” in a trade mark used in marketing does not, without more, constitute use of the designation “milk”. A distinctive trade mark indicating trade origin, rather than describing the goods or marketing them as dairy products, is outside the prohibition. A separate prohibition on presentations claiming, implying or suggesting that a product is dairy-based applies only where the presentation has that effect.

Oatly appealed against an Intellectual Property Office decision declaring its registration of the word mark POST MILK GENERATION invalid under section 3(4) of the Trade Marks Act 1994 for oat-based foods and drinks in classes 29, 30 and 32. The Hearing Officer held that the mark contravened Article 78(2) of Regulation (EU) No 1308/2013 and Part III of Annex VII because it contained the word “milk”. The Hearing Officer had separately rejected the deception objection under section 3(3)(b), and that finding was not appealed. The central issue was whether use of the word in this distinctive trade mark amounted to use of the protected designation “milk”.

1. Appeal allowed. The Hearing Officer construed point 5 of Part III of Annex VII to Regulation (EU) No 1308/2013 too widely by treating any use of the word “milk” in marketing as use of the protected designation.
2. Points 1 to 3 concern, respectively, milk, products derived exclusively from milk, and composite products in which milk or a milk product is an essential part. The designation provisions are directed to identifying products possessing the characteristics of dairy products, and the protected terms operate as generic descriptions of those products.
3. The relevant distinction is between using “milk” to identify goods as milk and merely using the word in marketing. A trade mark may be used in marketing without designating the goods as milk or as a milk product. POST MILK GENERATION was registered for goods across several classes and did not purport to market them as any particular product.
4. The reasoning in TofuTown supported the conclusion that terms such as “oat milk” or “plant cheese” could not be used as designations for plant-based products. It did not establish that every trade mark containing a protected term was prohibited.
5. Point 5 was therefore not engaged, and its proviso did not arise. Point 6 was also not engaged because the unchallenged finding was that the average consumer would understand the mark as referring to consumers who no longer consumed dairy milk, rather than as claiming, suggesting or implying that the goods were dairy products.
6. The court was reinforced in that conclusion by Article 5(2) of Directive 2000/13/EC and Article 17(4) of Regulation (EU) No 1169/2011, which distinguish a food’s name from a trade mark, protected name or brand name. The mark was distinctive, indicated trade origin and was not descriptive of the goods. Consequential matters, including costs, were left for agreement or further hearing.

• High Court of Justice, Business and Property Courts, Appeals (ChD): The appeal from the Intellectual Property Office decision dated 17 January 2023 was allowed.
• Intellectual Property Office: The Hearing Officer declared the mark invalid under section 3(4) of the Trade Marks Act 1994 for the goods in classes 29, 30 and 32, while rejecting the section 3(3)(b) objection and the section 3(4) objection concerning T-shirts.