Case background
In April 2021, Oatly AB registered the trademark “POST MILK GENERATION” for oat‑based food and drink products and t-shirts. Dairy UK, the trade association representing the British Dairy industry, challenged the registration arguing that it was invalid under section 3 of the Trade Marks Act 1994 (the Act), on the basis that its use was unlawful in the UK. The argument relied on EU Regulation (EU) No. 1308/2013 (the Regulation), which is assimilated law in the UK. The Regulation prohibits the use of designations such as “milk”, for the marketing of products which are not derived from animals. There is an exemption for use which clearly describes a characteristic quality of a product.
The case was initially heard before the Intellectual Property Office, which found the trademark to fall under the prohibition in the Regulation, and therefore to be invalid under section 3(4) of the Act. This decision was overturned on appeal by the High Court, which held the IPO had interpreted the term “designation” too broadly. The court clarified that the Regulation does not prohibit all uses of the word “milk”, only use which serves to identify products as being milk.
Dairy UK appealed to the Court of Appeal, which disagreed with the High Court and reinstated the IPO’s decision. The Court held that while “designation” can include a product description, it is not limited to that meaning. Given its ordinary meaning, the Court determined use of the word "milk" in the trademark amounted to a “designation” and was prohibited under the Regulation.
For more information on the Court of Appeal decision, please read our previous article: Court of Appeal declares POST MILK GENERATION trademark invalid for oat-based drinks and food products
Basis of the appeal
Following the Court of Appeal’s judgment, Oatly appealed to the Supreme Court, maintaining “designation” only applies to the name of a product, and its trademark did not name oat-based food or drink products as milk. It further submitted that, even if the mark fell within the scope of the prohibition, it was saved by the proviso as it clearly describes a characteristic quality of the products, namely that they are milk‑free.
The Supreme Court considered the following:
- What is the proper interpretation of the term “designation” in the Regulation and does the mark POST MILK GENERATION fall within the prohibition?
- What is the proper interpretation of the statutory exemption allowing designations to be used if they clearly describe a characteristic quality of the product, and is the mark POST MILK GENERATION saved by the proviso?
Court’s decision
The Court considered the meaning of the term “designation”. Adopting its natural meaning, it held that the term has a broad meaning and is not confined to the name by which a product is sold. It extends more broadly to any use of a protected term in relation to a product, including where it appears as part of a trademark, branding or marketing slogan.
The Court confirmed the Regulation’s protections extend beyond preventing consumer deception, emphasising the purpose of the Regulation is to establish fair conditions of competition. The prohibition applies regardless of whether consumers are likely to be misled or confused into mistaking the product for milk. The Court held the use of the term “milk” in the trademark amounted to use of a prohibited dairy designation in relation to non-dairy food and drink.
The Court deliberated as to whether “POST MILK GENERATION” clearly described a characteristic quality of the product so as to fall within the proviso. It held the mark referred to a group or generation of consumers rather than describing a characteristic of the product. Any suggestion that the products were milk-free was indirect and insufficiently clear to fall within the exemption.
The Court considered obiter whether "milk-free" for oat-based food or drink was permissible. It indicated this would amount to use of a prohibited designation but would be saved by the proviso.
Consequently, the Supreme Court unanimously dismissed the appeal.
Practical implications
This judgment provides welcome clarity on the use of protected designations for food and drink brands in the UK, and on the interpretation of assimilated EU law post‑Brexit.
Going forward, manufacturers of plant‑based products must exercise caution when using protected terms such as “milk”, “cheese”, "butter" and “yogurt in branding and marketing materials. The regulatory standards are applied strictly, and the decision leaves little room for argument that indirect or contextual uses of protected terms will be tolerated.
Importantly, the decision confirms that trademarks cannot be used to circumvent strict statutory restrictions on protected terms. It reinforces the Regulation's important role in not only protecting consumers but also ensuring fair competition.
DWF acted for Dairy UK.
