Don’t Cry Over Spilt "Milk": Key Takeaways from the Oatly Supreme Court Trade mark Ruling

Background to the proceedings

Oatly obtained a UK trade mark registration for POST MILK GENERATION in April 2021, covering oat-based food and drink goods in Classes 29, 30 and 32, and t-shirts in Class 25.

 

In November 2021, the trade association for the UK dairy industry, Dairy UK, sought to invalidate the registration on the basis that the mark was a) deceptive and b) prohibited under EU Regulation 1308/2013 establishing a common organisation of the markets in agricultural products (“the Regulation”), which, inter alia, regulates the use of dairy terms such as milk, cheese and butter.

 

In January 2023, the invalidation was partially upheld as the trade mark was deemed to be prohibited under the Regulation in respect of the oat-based food and drink goods. The registration was, however, upheld for t-shirts in Class 25.

 

Oatly successfully appealed this decision at the High Court, but Dairy UK took the case to the Court of Appeal, which overturned the High Court’s decision.

 

Oatly appealed to the Supreme Court, which unanimously agreed with the Court of Appeal’s finding, resulting in the POST MILK GENERATION registration being invalid for oat-based food and drinks.  

 

What did the Supreme Court have to consider?

Essentially, the Regulation provides that “designations” of milk may not be used to denote products which are not milk (milk being defined in the Regulation as exclusively deriving from “normal mammary secretions”). The appeal therefore hinged on the proper interpretation of the term “designation”.

 

The relevant provision under debate was Point 5 in Part III of Annex VII, referred to in Article 78 of the Regulation (“Point 5”), which provides that the designations referred to in points 1, 2 and 3 (i.e. for milk and milk products) may not be used for any product other than those referred to in that point. The second limb of Point 5 provides the following proviso:

 

“However, this provision shall not apply to the designation of products the exact nature of which is clear from traditional usage and/or when the designations are clearly used to describe a characteristic quality of the product.”

 

The questions put to the Supreme Court were: 

1. What is the proper interpretation of the term “designation” in Point 5 and is POST MILK GENERATION prohibited under Point 5 on the basis that it uses the term “milk” as a designation?
2. If POST MILK GENERATION is prohibited by Point 5, is it saved by the second limb of the proviso in Point 5 on the basis that it is clearly being used to describe a characteristic quality of the contested products for which the trade mark is registered?

 

As regards the first question, the Court held that “designation” in Point 5 does not merely mean the name of a product but has a broader meaning covering the use of the protected dairy terms in relation to food and drink. A designation does not need to be used as the name of product, it was enough that it was “used for” a product. Oatly’s argument that POST MILK GENERATION is not the name of the product and is therefore not a “designation” of milk, failed. As such, use of “milk” in POST MILK GENERATION for oat-based products was prohibited because oat drinks are not among the products permitted to bear that designation.

 

As to the second question, the Court held that it was far from clear that the trade mark POST MILK GENERATION was describing a characteristic of the product. Rather, it describes a characteristic of the target consumers, being a generation of young people who are concerned with the production and consumption of milk. It can therefore be considered as describing a characteristic quality of the product in at most an oblique and obscure way, and certainly not “clearly”. The Court noted that the fact that the mark is valid for t-shirts indicates that it cannot refer to a characteristic of oat-based food and drink because it would plainly not make sense when used on a t-shirt. However, the mark makes sense as a slogan about consumer identity which a consumer might proudly wear to show their support for the plant-based diet movement.  

 

What this means for brand owners

This decision carries commercial implications for brand owners of plant-based food and drink, who will need to be cautious when registering or using trade marks or slogans containing protected designations such as milk, cheese or butter.

 

For instance, plant-based brands should avoid terminology like “oat milk”, “plant-based cheese” or “vegan butter”, instead opting for terms such as “oat drink”, “plant-based slice” or “vegan spread”.

 

Overall, while the clarity and certainty brought by this decision is welcomed, it will require marketing teams promoting alternative-based brands to be more creative. Prior to this decision, using terms such as “plant-based cheese” may have been intended to appeal to consumers’ established eating habits while encouraging them to incorporate plant-based foods into their diet – if consumers are used to having a cheese sandwich, they can still do so, but with vegan ‘cheese’ instead. Marketing strategies like this will have to be adapted in the UK, which presents some opportunities for brands to find novel ways (and words) to describe their products.  

 

Interestingly, using the term “milk free” to describe plant-based food and drink products ought to be available to use as it clearly describes a characteristic quality of these products, namely that they do not contain milk.  

 

While it is a disappointing ruling for Oatly, perhaps the time of the POST MILK GENERATION has already come, where alternative-based brands no longer need to allude to animal-derived products to establish their place in the market.

 

Links:

SC decision - https://www.supremecourt.uk/cases/judgments/uksc-2025-0004

Regulation 2013 - https://eur-lex.europa.eu/eli/reg/2013/1308/oj/eng