The primary issue in this case is whether use of the word milk in the mark POST MILK GENERATION for non-dairy milk substitutes is contrary to EU law, specifically Regulation (EU) No. 1308/2013 on the labelling of agricultural products.
The Regulation has continuing effect in the UK as retained EU law. It provides that specific "definitions", "designations" and "sales descriptions" may only be used for the marketing of a product which conforms to requirements laid down in the Regulation. Of key importance here, non-dairy milk substitutes do not fit the definition of milk, which is defined as meaning “the normal mammary secretion obtained from one or more milkings without either addition thereto or extraction therefrom”.
In December 2023, as summarised in our blog High Court confirms EU law does not prohibit use of ‘milk’ in a trade mark for milk substitutes in the UK, the High Court held that Oatly’s trade mark POST MILK GENERATION is validly registered. It said the mark is not contrary to the Regulation because it is not a “designation”.
However, following an appeal by Dairy UK, that decision has been overturned by the Court of Appeal, which found in Dairy UK Ltd v Oatly AB [2024] EWCA Civ 1453 on 29 November 2024 that "designation" should be interpreted as including a trade mark or part of a trade mark.
There are some permitted instances where terms like milk and cream can be used for non-dairy products based on traditional use or "when the designations are clearly used to describe a characteristic quality of the product". Oatly tried to argue that the latter applies. However, the Court disagreed. It held that POST MILK GENERATION refers to the characteristics of consumers of the products rather than the products themselves.
As a result, the Court allowed the appeal and reinstated the UKIPO’s original decision that the trade mark POST MILK GENERATION is invalid.
Comments
It is well established, and generally uncontentious, that terms like milk cannot be used for non-dairy products in a way which purports to describe the goods. This is why companies like Oatly describe their non-dairy alternatives as ‘Oat Drink’ rather than ‘Oat Milk’.
The interpretation of a trade mark as a designation by the Court of Appeal also seems reasonable, but the consequence will be hard to swallow for some.
The decision means that terms like milk, cream, butter, cheese and yoghurt should not be used as part of a trade mark for the marketing of non-dairy substitutes for milk and milk products, even in a manner where they aren’t seeking to describe the nature of the goods (unless the use of the terms falls within the permitted exceptions).
Furthermore, such trade marks cannot be registered in the UK, since trade marks cannot be registered in the UK to the extent that their use would be prohibited in the UK.
Moving forward, producers of non-dairy substitutes for milk and milk products will need to be extremely careful about any brand names and marketing slogans they adopt.
Existing trade marks in use and trade mark registrations containing words like milk, cream, butter, cheese and yoghurt, even in a non-descriptive sense, should be reviewed in light of this decision.
