Getting a coffee these days is fraught with speedy decision making if you have not, in fact, memorised “Grande, blonde roast, double shot latte, half pump of salted caramel syrup with cashew milk”. I think I’m home free with my, “just a medium latte, please” and then the question “what milk” comes my way. I invariably panic and say “cows’ milk” which sounds weird, or “normal milk” which I fear labels me as intolerant of the vegans and dairy-free people of the world who’s normal is not my normal. 

That being said, the UK Intellectual Property Office (UKIPO), and the EU regulations on the permitted use of ‘milk’ are likely to agree with me:  normal milk is really only cows’ milk, unless you are after another regulation-permitted ‘mammary secretion’, like goats’ milk, in your coffee. Everything else, at least from a product description prospective, should be an ‘[INSERT MILK ALTERNATIVE] drink’. 

Oatly, one of the bigger heffers (ouch, sorry) on the UK milk alternatives scene, has successfully challenged the scope of the application of the Regulation to trade marks in the UK, overturning a decision of the UKIPO.  

On 19 November 2019, Oatly applied to register POST MILK GENERATION as a trade mark for a variety of oat-based milk substitutes (milk, yoghurt, cream, custard, ice cream, smoothies etc) in Classes 29, 30 and 32 as well as T-shirts, Class 25. The IPO found the sign to be inherently registerable as distinctive and not descriptive of the relevant goods. The mark was registered in January 2020.

The respondent, Dairy UK Limited, objected to the registration on the grounds of s3(3)(b) and s3(4) of the Trade Marks Act (the TMA), i.e. that a trade mark shall not be registered if:

  • S3(3)(b) it is of such a nature as to deceive the public; and 
  • S3(4) or to the extent that its use is prohibited in the UK by any enactment or rule of law.

The relevant enactment being the Article 78(2) and Part III of Annex VII of the EU regulation establishing a common organisation of the markets in agricultural products (the Regulation). The Regulation concerns the use of ‘milk’ and ‘milk products’ as a marketing standard, definition, designation and/or sales description.  In short, to use certain terms (milk, cream, cheese) the product must come from a mammal’s udder (usually bovine). 

In the invalidity proceedings, the Hearing Officer rejected the s3(3)(b) TMA objection on the grounds consumers wouldn’t be deceived into thinking products bearing the mark would be dairy based. However, the Hearing Officer found that consumer’s perspective wasn’t relevant for the purposes of s3(4) TMA or the Regulation, rather that the Regulation precludes the use of the word ‘milk’ for products that are not milk, and that trade mark use would come under the category of a ‘designation’ of a product. T-shirts were considered outside of scope as the Regulation is concerned with agricultural products. The Hearing Officer relied on the decision in TofuTown that the term ‘milk’ was precluded from use with plant-based products in marketing or advertising, even where the word ‘milk’ is expanded upon by clarifying. Marketing or advertising, according to the Hearing Officer, must include the use of trade marks. Oatly appealed.

Oatly’s argument was that the Regulation is concerned with accurate and consistent descriptions of products, not trade mark use: i.e. nature of goods, rather than commercial origin of the goods. In addition, they stated that TofuTown related to product descriptors such as “Plant Cheese” and “Tofu Butter”, and not trade marks. Dairy UK reiterated their agreement with the Hearing Officer’s decision.

On appeal Mr Justice Richard Smith ran through the purpose of the Regulation and found that, were Oatly to market an ‘oat milk’ or ‘plant cheese’, they would fall foul of the Regulation as a prohibited designation for non-dairy products. He found that the Hearing Officer erred in their interpretation of the Regulation, namely that use of the term ‘milk’ in the marketing of products inherently constitutes use of the ‘designation’ for milk. He stated the correct interpretation is that the Regulation is concerned with use of the term ‘milk’ to identify the nature of the product. In the case of Oatly, he said, the mark is registered for a range of products, but it doesn’t purport to market those products as ‘milk’ and as such the Regulation was not engaged. 

This decision will be welcome to plant-based alternative brands who often find marketing success by calling out their distinction from dairy or meat: think Oatly’s “Oh Wow, No Cow”, Violife’s “Change Your Cheese”, or the Beyond Meat brand itself (generic ‘meat’ isn’t restricted by the Regulation, although poultry, beef and veal meat are).  It will enable these brands to move past advertising campaigns into broader use, potentially on the products themselves, provided they are not ‘describing’ the nature of the goods. If you can pass the bar of being a non-descriptive trade mark, there is now scope for brands to play with the fine line between “Plant Cheese” and “Post Milk”.