The Supreme Court has forbidden Oatly from using the phrase ‘Post Milk Generation’ in its branding and marketing, ruling that it breached regulation 1308/2013.
Among other things, this regulation offers protection over the use of dairy terms, such as milk, cheese, and yogurt; with plant-based alternatives prohibited from describing themselves as, for example, a plant-based milk.
Oatly has been defending its use of ‘Post Milk Generation’ since 2021 following a move from Dairy UK to ban it.
Dairy UK’s original application succeeded before the hearing officer in the Intellectual Property Office. However, Oatly appealed the decision. This was overturned in the High Court by Richard Smith J who held that the registration was valid. His decision was, in turn, overturned by the Court of Appeal, triggering Oatly to appeal to the highest court in the land.
Oatly argued that the phrase should not be banned from its marketing as it is not the name of a product (designation) and does not describe a food or drink. Instead, it refers to a consumer group.
However, the Supreme Court has ruled in favour of Dairy UK, stating that a trademark containing a protected designation – even if used in a slogan – does breach the regulation.
This decision means that the UK Intellectual Property Office (UKIPO)’s original judgement is reinstated and must now be implemented.
As such Oatly’s trademark for ‘Post Milk Generation’ will be cancelled by the UKIPO, with Oatly banned from using the phrase to market any dairy-free milk alternatives in future.
“It has taken the highest court in the land to decide once and for all whether a plant-based milk alternative can be branded as ‘milk’ and marketed as such. And the outcome is not what Oatly was hoping for,” said Laurie Bray, senior associate and trade mark attorney at European IP firm, Withers & Rogers.
“EU regulation is clear that certain terms can only be used to denote the actual products that they describe – for example, milk, wine and olive oil. Milk is defined as ‘the normal mammary secretion’ from milking, ‘without any addition or extraction’. The relevant EU regulation still has effect in the UK, as ‘assimilated law’.
“Oatly argued that the use of the term milk within a trade mark does not fall foul of this regulation if the term is not being used in a descriptive manner.”
Bryan Carroll, general manager for Oatly UK & Ireland, said the business is “deeply disappointed” by the ruling.
He continued: “At Oatly, we will always stand up for what is right, and in our view prohibiting the trademarking of the slogan ‘Post Milk Generation’ for use on our products in the UK, is a way to stifle competition and is not in the interests of the British public. This decision creates unnecessary confusion and an uneven playing field for plant-based products that solely benefits Big Dairy.
“Despite today’s ruling, we remain committed to driving positive change and advocating for a food system that helps people eat better without recklessly taxing the planet’s resources. And rest assured, we’ll be finding a way to get our ‘Post Milk Generation’ merchandise into the hands of our brilliant community.”
Dr Judith Bryans CEO of Dairy UK said the association is “delighted”.
“This ruling is an important decision for the sector as it finally provides clarity on how dairy terms can - and cannot - be used in branding and marketing,” she said.
“It brings greater certainty for businesses and helps ensure that long-established dairy terms continue to carry clear meaning for consumers, while allowing appropriate descriptors to be used where the law permits.”
This may not be the end of the legal dispute either, with Bray adding that it’s likely Dairy UK will look to go after Oatly’s other trademark registrations.
“Oatly owns more than one UK trade mark registration for the mark POST MILK GENERATION and, based on this decision, it seems likely that Dairy UK will now seek to cancel Oatly’s other registrations, at least insofar as they cover milk alternatives. It remains to be seen whether Oatly’s numerous EU trade mark registrations will now face similar action from Dairy UK’s European counterparts,” she said.
Bray continued: “The key message for brand owners developing new plant-based products is to remember that plant-based milk alternatives are not milk, and shouldn’t be described or branded as such. The same applies to terms which denote milk-based products, such as cream, butter, cheese and yoghurt, all of which are protected under the EU regulation. Alternative phrases such as ‘oat drinks’ are permissible.
“Applying for trade mark protection for key names and slogans remains a good strategy for innovative food and drink businesses looking to strengthen their position in a rapidly expanding market. Using specialist certification marks for plant-based or vegan food and drink products, such as the Vegan Society’s Sunflower, could also help them to stand out on the shelves.”
