Dairy UK Ltd (Respondent) v Oatly AB (Appellant)

Awaiting Judgment

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Appeal
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Case summary

Case ID

UKSC/2025/0004

Parties

Appellant(s)

OATLY AB

Respondent(s)

DAIRY UK LIMITED

Issue

(1) Is the term ‘POST MILK GENERATION’ a “designation” for the purposes of Article 78 of Parliament and Council Regulation (EU) No. 1308/2013 (as amended) (the “2013 Regulation”) such that Oatly AB could not register it as a trade mark? (2) If considered a “designation” of “milk”, does the term ‘POST MILK GENERATION’ clearly describe a “characteristic quality of the product” so that its use is not prohibited by the 2013 Regulation?

Facts

The Appellant, Oatly AB (“Oatly”), is a company that produces alternatives to dairy products, including oat-based drinks. The Respondent, Dairy UK Ltd (“Dairy UK”), is the trade association for the UK dairy industry. In November 2019, Oatly filed an application with the United Kingdom Intellectual Property Office (“the IPO”) to register ‘POST MILK GENERATION’ (“the Trade Mark”) as a trade mark to be used on T-shirts and oat-based products. In April 2021, the IPO registered the Trade Mark. However, later that year, Dairy UK filed an application with the IPO for a declaration that the Trade Mark was invalidly registered under sections 3(3)(b) and 3(4) of the Trade Marks Act 1994 (“the 1994 Act”). Section 3(4) provides that “[a] trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law…”. Dairy UK argued that section 3(4) of the 1994 Act applied as the Trade Mark was prohibited by Article 78(2) of the 2013 Regulation. The 2013 Regulation has been retained since Brexit and, among other things, controls when “designations” such as “milk” and related terms can be used for products. In a decision issued on 17 January 2023, the IPO concluded that the Trade Mark was not deceptive but held that the Trade Mark was prohibited under Article 78 of the 2013 Regulation and, consequently, section 3(4) of the 1994 Act. Oatly appealed to the High Court, which overturned the IPO’s decision on the basis that a term is only a “designation” under the 2013 Regulation if it is a generic description of the product, which the Trade Mark was not, with the result that the Trade Mark was neither a “designation” nor prohibited by the 2013 Regulation. The Court of Appeal disagreed with this analysis, holding that the Trade Mark was a “designation” and prohibited under the 2013 Regulation. Oatly appealed to the Supreme Court arguing that ‘POST MILK GENERATION’ was not a “designation” and, in the alternative, even if it was, it would be saved by an exemption in the 2013 Regulation for “designations” which are used to “clearly… describe a characteristic quality of the product”.