In a decision issued on 11 February, the UK Supreme Court ruled that the mark “POST MILK GENERATION” for oat-based food and drink was invalidly registered.
Background to the case
Oatly AB (producers of the OATLY non-dairy milk substitute) had registered the mark for use on its plant-based products. Dairy UK, the trade body for the dairy industry, challenged the registration. It relied on retained EU legislation (now part of UK law), which protects terms such as “milk” and restricts their use to products that meet specific definitions. Under section 3(4) of the Trade Marks Act 1994, a trade mark cannot be registered if its use is prohibited by other laws.
Following decisions from both the High Court and Court of Appeal that the trade mark was, in fact, a designation prohibited under the 2013 Regulation, Oatly appealed to the Supreme Court.
Referral to the Supreme Court
The Court considered two main questions.
First, did the phrase “POST MILK GENERATION” use the word “milk” as a protected “designation”? The Court said yes. It confirmed that “designation” has a broad meaning. It is not limited to the actual name of a product but includes wider use of the term in marketing food and drink products.
Second, was the mark allowed under an exception for cases where the term clearly describes a characteristic of the product? Oatly argued that the phrase suggested its products were milk-free. The Court disagreed. It found that the slogan was aimed at a particular group of consumers and did not clearly describe a product characteristic. Any reference to being milk-free was indirect and unclear.
As a result, the mark is invalid for oat-based food and drink (though not for unrelated goods such as clothing).
What this means for trade mark owners
This decision highlights the importance of checking sector-specific regulations before filing trade marks. Even creative slogans can fall foul of product-labelling laws. Businesses in regulated industries, particularly food and drink, must ensure that protected terms, such as “milk”, are not used in a way that breaches legislation, or they risk losing trade mark protection.
