POST “MILK” GENERATION

Supreme Court unanimously dismisses Oatly’s appeal thereby confirming that the mark POST MILK GENERATION is indeed a designation that is prohibited under the 2013 EU Regulation – Article 78 of Parliament and Council Regulation (EU) No. 1308/2013 (as amended) (the “2013 Regulation”).

The Supreme Court finds that POST MILK GENERATION is a “designation” and its use is not saved by the proviso because it is not “clearly being used to describe a characteristic quality of the product”.

This brings an end to a long running dispute between Dairy UK (the trade association for the UK dairy industry), and Oatly, a company that produces alternatives to dairy products, including oat-based drinks.

Oatly had registered the trade mark POST MILK GENERATION for oat based food and drink products. Dairy UK argued that the mark was invalidly registered under Section 3(4) of the Trade Marks Act 1994 (TMA) on the basis that the mark was prohibited by the 2013 Regulation. The argument being that use of the term “milk” must be reserved for products derived from animals unless specific exceptions apply.

This is a case that in which I (Andrew Marsden of Wilson Gunn) represented Dairy UK before the UKIPO (Decision O/0049/23) and before the High Court in the appeal by Oatly against the UKIPO Decision.

The High Court overturned the IPO’s decision, but the Court of Appeal disagreed and held that the trade mark was a “designation” prohibited under the 2013 Regulation. The Supreme Court has now confirmed the original IPO decision and the trade mark registration POST GENERATION MILK has been invalidated.

This is an important decision for the UK dairy industry and has significant implications for the UK plant-based industry. Through Section 3(4) of the TMA and the 2013 Regulation terms such as” milk”, “cheese”, and” yogurt” remain protected under EU law. Use of such terms for non-dairy substitutes can be prohibited even if uses in a non-descriptive manner.

Full details of the judgement will soon be available on the Supreme Court website. If you have any questions about the case please contact one of our team.

Andrew Marsden
Wilson Gunn LLP