Key takeaways
- The UK Supreme Court confirmed that milk must come from a mammal. This means that the trade mark POST MILK GENERATION could not be registered for oat-based products but was fine for T-shirts.
- Plant-based brands face increased regulatory constraints in branding and marketing.
- The case highlights the importance of aligning branding strategies with sector-specific regulation.
- Plant-based food manufacturers should create alternative descriptive names for meat and dairy products.
Introduction
The Supreme Court’s decision in Dairy UK Ltd (Dairy UK) v Oatly AB (Oatly)[1] represents a battle in the long war between the alternative proteins industry and the meat and dairy sector. Traditional farming businesses wish to protect the descriptive terms which are familiar to consumers, such as sausage, cheese and milk. On the other hand, the alternative protein industry wishes to use those descriptive terms to convey to consumers that their products are a substitution for the traditional version.
In recent years, consumer preferences have shifted towards plant-based products, driven by environmental, ethical and health considerations. Companies such as Oatly have capitalised on these trends, positioning themselves as modern and sustainable alternatives to traditional farming methods. However, the success of such brands has brought them into direct competition with established stakeholders in the meat and dairy industries, prompting increased scrutiny over the language used in marketing and on labelling.
Background
In April 2021, Oatly’s trade mark application for POST MILK GENERATION was granted registration in relation to various oat-based food and drink products, in classes 29, 30 and 32, and for T-shirts in class 25.
In November 2021, Dairy UK applied for the invalidation of Oatly’s registration claiming it was invalidly registered under sections 3(3)(b) and 3(4) of the UK’s Trade Marks Act 1994.
Section 3 provides (so as far is relevant):
3 Absolute grounds for refusal of registration
(3) A trade mark shall not be registered if it is:
(a)…
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
(4) A trade mark shall not be registered if or to the extent that its use is prohibited… by any enactment or rule of law or by any provision… other than law relating to trade marks.
Dairy UK relied on Parliament and Council Regulation (EU) No. 1308/2013, now retained as assimilated law within the United Kingdom (the 2013 Regulation).
The 2013 Regulation establishes a common organisation of markets in agricultural products and includes specific provisions governing the use of certain terms, including “milk” which is defined in point 1 of Part III of Annex VII as “the normal mammary secretion“.
Point 5 of the 2013 Regulation[2] provides that ‘designations’ of “milk” and “milk products” referred to in Points 1, 2 and 3 of Annex VII may not be used for any product other than those referred to in that point (Point 5 of the 2013 Regulation).
Point 5 of the 2013 Regulation does however contain an exclusion that the provision does not apply where the designations are clearly used to describe a characteristic quality of the product (the exclusion to Point 5).
The First Instance decision[3]
The hearing officer at the UK Intellectual Property Office found in favour of Oatly on the section 3(3)(b) ground and held that POST MILK GENERATION did not deceive, nor create a sufficiently serious risk of deception of members of the general public.
On the section 3(4) ground, the hearing officer found in favour of Dairy UK in classes 29, 30 and 32. The hearing officer held that the wording of Point 5 was strict and use of the word “milk” was prohibited for non-milk products under Point 5 regardless of how the mark as a whole may be viewed by consumers, which is not a consideration under point 5.[4]
The invalidity application, however, failed in relation to T-shirts as T-shirts are not agricultural products and therefore fall outside the scope of the 2013 Regulation.
Oatly appealed the decision regarding section 3(4) in relation to the oat-based food and drink products.
The High Court’s decision[5]
The UKIPO’s decision was overturned by the High Court who found that the hearing officer had interpreted Point 5 of the 2013 Regulation too widely to include the mark registered[6] and that ‘designation’ referred to a generic description of the product and the designations in Point 5 of the 2013 Regulation were exclusive to the trade mark.[7]
Dairy UK appealed to the Court of Appeal.
The Court of Appeal’s decision[8]
The Court of Appeal held that the trade mark POST MILK GENERATION, when used in respect of oat-based food and drink products was a “designation” of milk which was prohibited under Point 5 of the 2013 Regulation.
Oatly appealed to the Supreme Court.
Issues raised in the appeal
Oatly raised the following issues:
- Does the trade mark “POST MILK GENERATION” use the term “milk” as a “designation” within the meaning of Point 5 of the 2013 Regulation?
- If so, is “POST MILK GENERATION” nevertheless valid when used as a trade mark in relation to those products because it clearly describes a characteristic quality of the contested products such that it is saved by the exclusion to Point 5?
The Supreme Court’s decision[9]
On issue 1, Oatly argued that the Court of Appeal’s interpretation was incorrect as “designation” only referred to the name of a product, and that POST MILK GENERATION was not being used to name the type of product. As such, it did not contravene Point 5 of the 2013 Regulation.
The Supreme Court held that “designation” as contained in the 2013 Regulation had a wider meaning[10] and referred to its use in respect of food and drink rather than the name of a product, that is, a trade mark. It was held that POST MILK GENERATION did fall within the scope of Point 5 of the 2013 Regulation on the basis that it uses the term “milk” as a designation.[11]
On issue 2, Oatly argued that even if it was found that Point 5 did apply, the trade mark would be valid under the exclusion to Point 5 in that POST MILK GENERATION was being clearly used to describe a characteristic quality of the goods in classes 29, 30 and 32, specifically that they were all milk-free.
The Supreme Court however held that POST MILK GENERATION did not clearly describe any such characteristic. Instead, it was interpreted as referring to a group of consumers, namely those who no longer consume dairy products.[12] The exclusion to Point 5 did not apply.
The Court also considered the hypothetical trade mark MILK-FREE. In its judgment that would fall within the prohibited “designation” under Point 5 but would be saved by the exclusion to Point 5 on the ground that it is clearly being used to describe a characteristic quality of the goods, specifically that they did not contain milk.[13]
The appeal was dismissed in respect of both issues.
Conclusion
- The judgment has important implications for brands operating in regulated sectors. Brand owners must carefully assess the use of protected terminology in all aspects of marketing and branding.
- Trade mark registrations may be vulnerable to invalidity where they conflict with other legal provisions. This highlights the need for a holistic approach to intellectual property protection, taking into account both trade mark law and sector-specific regulations.
- The case also illustrates the continued influence of EU-derived law within the UK legal system. Although the UK has left the European Union, many regulatory frameworks remain in force as assimilated law.
[1] Dairy UK Ltd v Oatly AB [2026] UKSC 4
[2] Point 5 in Part III of Annex VII referred to in Article 78 of the 2013 Regulation
[3] Invalidity application in relation to trade mark registration no. 3445440 POST MILK GENERATION, O/0049/23
[4] Paragraph 28
[5] Oatly AB v Dairy UK Ltd [2023] EWHC 3204 (Ch)
[6] Paragraph 39
[7] Paragraph 41
[8] Dairy UK Ltd v Oatly AB [2024] EWCA Civ 1453
[9] Dairy UK Ltd v Oatly AB [2026] UKSC 4
[10] Paragraphs 31 to 33
[11] Paragraph 34
[12] Paragraph 40
[13] Paragraph 35
