Stop milking it! Plant-based food giant Oatly wins four-year court battle against Dairy UK to keep the word ‘milk’ on its vegan packaging

• Oatly was granted a trademark for the slogan ‘Post Milk Generation’ in 2019
• This decision was rescinded after complaints from the dairy trade association 
• After a legal battle, High Court Judge Mr Justice Richard Smith sided with Oatly

Plant-based milk brand Oatly has won a landmark court battle against the UK dairy industry over the right to use the word ‘milk’ on the packaging of its products.

The Swedish vegan food giant beat Dairy UK Ltd, the trade association of the British dairy industry, after a four-year battle over the use of the slogan ‘Post Milk Generation’ on its food and drink.

Dairy UK argued that it was unlawful to use the term ‘milk’ in a trademark ‘in relation to products that are not mammary secretions’.

The trade organisation relied on pre-Brexit European Court regulations from 2013, which restricted the use of the word ‘milk’ on packaging and in the marketing of food and drink.

However, High Court judge, Mr Justice Richard Smith, ruled that the trademark is valid for use on Oatly products, rejecting that the word ‘milk’ should be banned in any circumstances on non-milk food packaging. 

Oatly has won a four-year-long legal battle to put a slogan containing the word ‘milk’ on its vegan products

He said the ‘average customers’ would view products bearing Oatly’s slogan as ‘for consumers who no longer consume dairy milk’, and that it cannot be said that it ‘claims, suggests or implies that (Oatly’s) products marketed in conjunction with it are dairy products’.

Oatly – famous for its oat-based drink used a milk substitute, as well as its vegan yoghurt, custard and ice-cream – was initially allowed to register the slogan as a trademark in 2019 for use on its food and drink products

However, this was later rescinded after objections from Dairy UK.

Dairy UK, whose board includes bosses from national milk and cheese giants, including Arla, Dale Farm and Lakeland Foods, describes itself as ‘the voice of the UK dairy industry’.

It’s website states: ‘Our overarching mission at Dairy UK is to promote the consumption of great tasting UK dairy products at home and on the international market.’

Since the ruling against Oatly four years ago, it has been fighting Dairy UK’s claim , which is based on European regulations which granted protected status to certain agricultural products in terms of marketing.

Those regulations – Article 78(2) of Regulation (EU) No 1308/2013 of the European Parliament – restrict the use of the word ‘milk’ on food packaging and granting protected status to dairy products.

Oatly has been allowed to use the slogan ‘Post Milk Generation’ on T-shirts since January, but a High Court decision means it can now be used on its oat-based drink also

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The regulations assert that milk means exclusively the ‘normal mammary secretion obtained from one or more milkings without either addition thereto or extraction therefrom’.

Pre-Brexit European regulations were retained in English law under The European Union (Withdrawal) Act 2018.

Lawyers for Oatly argued that the ‘Post Milk Generation’ slogan, whist containing the protected word ‘milk’ sidestepped the regulations, as it was not a description of the product it was selling, but of the likely consumer. 

In January, Oatly were awarded a trademark by the Intellectual Property Office (IPO) to use the slogan on T-shirts only, the court heard. 

An IPO officer made a finding that consumers were unlikely to be confused into thinking that food products bearing the slogan contained milk, but nevertheless refused to grand the trademark for food and drink.

The officer found that the word ‘milk’ cannot be used for products which are not dairy milk, even in the context of a trademark that does not describe the product itself. 

However, this was overturned by Judge Smith in the High Court.

Granting Oatly victory in their appeal against the officer’s decision, the judge said that, having found that the public were unlikely to be ‘deceived’ by the trademark, they should have allowed it to be used on food and drink.

The judge said that the vital point was that the trademark does not purport to describe the product and is unlikely to lead to consumer confusion.

He said: ‘Oatly’s position is that…a trademark which includes ‘milk’ for goods which are not milk… might still be acceptable if the mark doesn’t claim, imply or suggest that it is a dairy product.

‘Terms such as definition, designation, name and sales description in the EU legislation… are all directed to such generic descriptions such that the nature of the relevant food, foodstuff or food product can be discerned.

‘However, that is far removed from the situation in this case, in which the mark does not describe any product.

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‘The mark was not being used to define, designate, describe or name any food, foodstuff or food product, as opposed to describing its source.

‘Dairy takes a binary view of the matter: ‘milk’ appears in the mark and ‘milk’ may only be used for goods… which are: milk from animals, products derived from animal milk and composite products in which milk is an essential part. If they are not milk, the word ‘milk’ cannot be used in the trade mark.

‘Were the appellant to market and sell in the UK an oat-based drink as ‘oat milk’, that designation would fall foul of the regulation.

‘However, it would be open to the appellant to name one of its products as ‘oat drink’ since that name would not implicate the protected designations for dairy products.

‘The use of the mark in conjunction with that ‘oat drink’ product would also be permissible since, although the former contains the word ‘milk’, the mark would not be used to market and sell the latter as ‘milk’, not being descriptive of a particular product rather than, as the hearing officer found, indicative of the appellant’s products more generally as being for those who no longer consume dairy milk.

‘In this case, the mark was registered for a variety of goods in different classes and, although it may well have been used in their marketing, it does not purport to market them as any particular product, let alone as milk.

‘For the above reasons, I would allow the appeal.’

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