As anyone who orders a coffee these days will be aware, if your order isn't specific enough, it will usually prompt the enquiry: "which milk?" While the word "milk" is used innocently in this context, in Oatly AB v Dairy UK Ltd the complexities of the interaction between food labelling regulations and intellectual property rights came to the fore.
Background
In November 2019, Oatly (a Swedish company known for its production of alternative dairy products) filed a trademark application for "POST MILK GENERATION". Following the UK Intellectual Property Office's (UKIPO) initial acceptance of this application, Dairy UK (the trade association for dairy supply in the UK) objected to its registration.
Dairy UK relied upon section 3(3)(b) of the Trade Marks Act 1994 (TMA) which prohibits the registration of a trademark that deceives the public, and on section 3(4), which prevents registration if use of the mark is prohibited.
In January 2023, the UKIPO agreed with Dairy UK's arguments and invalidated the trademark for goods registered in the classes for various oat-based food and drink products. Oatly appealed.
Decision
The nub of the dispute was about the interpretation of Regulation (EU) No 1308/2013 (the "Regulation") which prohibits "milk" to be used in conjunction with any goods that do not include the "normal mammary secretion...obtained from one or more milkings", do not derive exclusively from animal milk, or do not consider animal milk "an essential part" in either quantity or characterisation.
Oatly argued that the Regulation applied to the description of a product rather than the use of a trademark. In other words, it applied to the nature of the goods and not as an indicator of the commercial origin of the goods. Dairy UK maintained that "milk" was used in the mark and could only be used with goods that fell within the scope of the Regulation.
The court ultimately favoured Oatly's interpretation, finding that the trademark was distinctive and not descriptive of the goods for which it was registered. It found that, inherently, the products were neither identified nor marketed as milk despite the inclusion of the word in the trademark. Therefore, they did not fall foul of the prohibition in the Regulation.
Comment
Although the court confirmed that Oatly's use aligned with the Regulation, whether plant-based businesses are using words descriptively when marketing their products will likely prompt further challenges before the UKIPO and the courts.
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