Don't mention "milk" (unless you are a dairy product)!

The Supreme Court has handed down its decision in the appeal against the invalidation of Oatly's UK trade mark for the term “POST MILK GENERATION”. Oatly's trade mark had been invalidated as a result of an application made by Dairy Uk Limited, the trade association for the UK dairy industry. They relied on section 3(4) of the Trade Marks Act 1994 that mandates that a trademark shall not be registered if its use is prohibited in the UK by any enactment or rule of law. The law they relied on was a Regulation that provides that the “designation” of “milk” may not be used for any product other than those that come within the definition of milk in the regulations which requires that the product come from animals. The question in the appeal was what was meant by “designation”. Oatly argued that it should be given a narrow meaning of the name of a food or drink rather than a broader meaning of a term used in respect of a food or drink. The Supreme Court agreed with the broader meaning, which meant that the use of the work “milk” within the term “POST MILK GENERATION” when used in relation to non-dairy drinks was prohibited. Oatly had a fallback position that if the use of term was prohibited then the use in the term “POST MILK GENERATION” fell within one of the exceptions, because it was clearly being used to describe a charteristic quality of the of the oat drink product. This argument was also unsuccessful, as the Court did not accept that the use was “clear”. 

The result of this is that the term “milk” cannot be used, or incorporated into trade marks in the UK for anything other than dairy products as defined within this regulation. The Supreme Court decision was not based on consumer protection principles which are the foundation of trade mark law but instead on the basis of policy to “set out fair conditions of competition” by setting out a strict prohibition in protecting the use of the term “milk”. This is a win for the dairy industry who are looking to resist the rapidly growing dairy alternative market. 

If you are active in the dairy or dairy alternative drinks sectors then this decision will need to be taken into consideration when considering trade marks for registration or use. If your products are not dairy products you will not be able to use the term milk in relation to your products. If you are in the dairy sector this is another tool that can be used against the non-dairy alternative sector when opposing trade mark applications and the use of trade marks that contain the word milk. 

This may be another of these instances where the law appears to be removed from what is actually happening in the consumer marketplace. Consumers frequently refer to “oat milk”, “soy milk” and “almond milk” but the producers of these products are now restricted from using these phrases themselves to communicate to their customers. Something to think about over a nice cup of tea with oat "milk"!